Trade mark Act Definitions

(e) Certification trade mark means a mark capable of distinguishing the goods orservices in connection with which it is used in the course of trade which are certified by theproprietor of the mark in respect of origin, material, mode of manufacture of goods orperformance of services, quality, accuracy or other characteristics from goods or services notso certified and registrable as such under Chapter IX in respect of those goods or services inthe name, as proprietor of the certification trade mark, of that person;(g) Collective mark means a trade mark distinguishing the goods or services ofmembers of an association of persons (not being a partnership within the meaning of theIndian Partnership Act, 1932) which is the proprietor of the mark from those of others;(9 of 1932)(h) deceptively similarA mark shall be deemed to be deceptively similar to anothermark if it so nearly resembles that other mark as to be likely to deceive or cause confusion;(i) false trade description means(I) a trade description which is untrue or misleading in a material respect as regards thegoods or services to which it is applied; or(II) any alteration of a trade description as regards the goods or services to which it isapplied, whether by way of addition, effacement or otherwise, where that alteration makes thedescription untrue or misleading in a material respect; or(III) any trade description which denotes or implies that there are contained, as regardsthe goods to which it is applied, more yards or metres than there are contained thereinstandard yards or standard metres; or(IV) any marks or arrangement or combination thereof when applied(a) to goods in such a manner as to be likely to lead persons to believe that the goodsare the manufacture or merchandise of some person other than the person whose merchandiseor manufacture they really are;(b) in relation to services in such a manner as to be likely to lead persons to believe that theservices are provided or rendered by some person other than the person, whose services theyreally are; or(V) any false name or initials of a person applied to goods or services in such manneras if such name or initials were a trade description in any case where the name or initials(a) is or are not a trade mark or part of a trade mark; and(b) is or are identical with or deceptively similar to the name or initials of a personcarrying on business in connection with goods or services of the same description or both andwho has not authorised the use of such name or initials; and(c) is or are either the name or initials of a fictitious person or some person not bonafide carrying on business in connection with such goods or services,and the fact that a trade description is a trade mark or part of a trade mark shall not preventsuch trade description being a false trade description within the meaning of this Act;(z) service means service of any description which is made available to potentialusers and includes the provision of services in connection with business of any industrial orcommercial matters such as banking, communication, education, financing, insurance, chitfunds, real estate, transport, storage, material treatment, processing, supply of electrical orother energy, boarding, lodging, entertainment, amusement, construction, repair, conveying of

news or information and advertising;

(za) trade description means any description, statement or other indication, direct orindirect,(i) as to the number, quantity, measure, guage or weight of any goods; or(ii) as to the standard of quality of any goods or services according to a classificationcommonly used or recognised in the trade; or(iii) as to fitness for the purpose, strength, performance or behaviour of any goods,being drug as defined in the Drugs and Cosmetics Act, 1940, or food as defined in thePrevention of Food Adulteration Act, 1954; or(iv) as to the place or country in which or the time at which any goods or services weremade, produced or provided, as the case may be; or(v) as to the name and address or other indication of the identity of the manufacturer orof the person providing the services or of the person for whom the goods are manufactured orservices are provided; or(vi) as to the mode of manufacture or producing any goods or providing services; or(vii) as to the material of which any goods are composed; or(viii) as to any goods being the subject of an existing patent, privilege or copyright, andincludes(a) any description as to the use of any mark which according to the custom of the tradeis commonly taken to be an indication of any of the above matters;(b) the description as to any imported goods contained in any bill of entry or shippingbill;(c) any other description which is likely to be misunderstood or mistaken for all or anyof the said matters;(zb) trade mark means a mark capable of being represented graphically and which iscapable of distinguishing the goods or services of one person from those of others and mayinclude shape of goods, their packaging and combination of colours; and(i) in relation to Chapter XII (other than section 107), a registered trade mark or a markused in relation to goods or services for the purpose of indicating or so as to indicate aconnection in the course of trade between the goods or services, as the case may be, and someperson having the right as proprietor to use the mark; and(ii) in relation to other provisions of this Act, a mark used or proposed to be used inrelation to goods or services for the purpose of indicating or so to indicate a connection in thecourse of trade between the goods or services, as the case may be, and some person having theright, either as proprietor or by way of permitted user, to use the mark whether with orwithout any indication of the identity of that person, and includes a certification trade mark orcollective mark;(zg) well-known trade mark, in relation to any goods or services, means a markwhich has become so to the substantial segment of the public which uses such goods orreceives such services that the use of such mark in relation to other goods or services wouldbe likely to be taken as indicating a connection in the course of trade or rendering of servicesbetween those goods or services and a person using the mark in relation to the first-mentionedgoods or services.Chapter II

The Register and Conditions for Registration

Appointment of Registrar and Other Officers3.(1) The Central Government may, by notification in the Official Gazette, appoint aperson to be known as the Controller General of Patents, Designs and Trade Marks, who shallbe the Registrar of Trade Marks for the purposes of this Act.(2) The Central Government may appoint such other officers with such designations asit thinks fit for the purpose of discharging, under the superintendence and direction of theRegistrar, such functions of the Registrar under this Act as he may from time to timeauthorise them to discharge.Power of Registrar to Withdraw or Transfer Cases, etc.4. Without prejudice to the generality of the provisions of sub-section (2) of section 3,the Registrar may, by order in writing and for reasons to be recorded therein, withdraw anymatter pending before an officer appointed under the said sub-section (2) and deal with suchmatter himself either de novo or from the stage it was so withdrawn or transfer the same toanother officer so appointed who may, subject to special directions in the order of transfer,proceed with the matter either de novo or from the stage it was so transferred.Trade Marks Registry and Offices Thereof5.(1) For the purposes of this Act, there shall be a trade marks registry and the TradeMarks Registry established under the Trade and Merchandise Marks Act, 1958 shall be theTrade Marks Registry under this Act.(43 of 1958)(2) The head office of the Trade Marks Registry shall be at such place as the CentralGovernment may specify, and for the purpose of facilitating the registration of trade marks,there may be established at such places as the Central Government may think fit branchoffices of the Trade Marks Registry.(3) The Central Government may, by notification in the Official Gazette, define theterritorial limits within which an office of the Trade Marks Registry may exercise itsfunctions.(4) There shall be a seal of the Trade Marks Registry.The Register of Trade Marks6.(1) For the purposes of this Act, a record called the Register of Trade Marks shallbe kept at the Head Office of the Trade Marks Registry, wherein shall be entered all registeredtrade marks with the names, addresses and description of the proprietors, notifications ofassignment and transmissions, the names, addresses and descriptions of registered users,conditions, limitations and such other matter relating to registered trade marks as may beprescribed.(2) Notwithstanding anything contained in sub-section (1), it shall be lawful for theRegistrar to keep the records wholly or partly in computer floppies diskettes or in any otherelectronic form subject to such safeguards as may be prescribed.(3) Where such register is maintained wholly or partly on computer undersub-section (2) any reference in this Act to entry in the Register shall be construed as thereference to any entry as maintained on computer or in any other electronic form.

(4) No notice of any trust, express or implied or constructive, shall be entered in the

register and no such notice shall be receivable by the Registrar.

(5) The register shall be kept under the control and management of the Registrar.(6) There shall be kept at each branch office of the Trade Marks Registry a copy of theregister and such of the other documents mentioned in section 148 as the Central Governmentmay, by notification in the Official Gazette, direct.(7) The Register of Trade Marks, both Part A and Part B, existing at thecommencement of this Act, shall be incorporated in and form part of the register under thisAct.Classification of Goods and Services7.(1) The Registrar shall classify goods and services, as far as may be, in accordancewith the International classification of goods and services for the purposes of registration oftrade marks.(2) Any question arising as to the class within which any goods or services falls shallbe determined by the Registrar whose decision shall be final.Publication of Alphabetical Index8.(1) The Registrar may publish in the prescribed manner an alphabetical index ofclassification of goods and services referred to in section 7.(2) Where any goods or services are not specified in the alphabetical index of goodsand services published under sub-section (1), the classification of goods or services shall bedetermined by the Registrar in accordance with sub-section (2) of section 7.Absolute Grounds for Refusal of Registration9.(1) The trade marks(a) which are devoid of any distinctive character, that is to say, not capable ofdistinguishing the goods or services of one person from those of another person;(b) which consist exclusively of marks or indications which may serve in trade todesignate the kind, quality, quantity, intended purpose, values, geographical origin or the timeof production of the goods or rendering of the service or other characteristics of the goods orservice;(c) which consist exclusively of marks or indications which have become customary inthe current language or in the bona fide and established practices of the trade,shall not be registered:Provided that a trade mark shall not be refused registration if before the date ofapplication for registration it has acquired a distinctive character as a result of the use made ofit or is a well known trade mark.(2) A mark shall not be registered as a trade mark if(a) it is of such nature as to deceive the public or cause confusion;(b) it contains or comprises of any matter likely to hurt the religious susceptibilities ofany class or section of the citizens of India;(c) it comprises or contains scandalous or obscene matter;(d) its use is prohibited under the Emblems and Names (Prevention of Improper Use)Act, 1950.(12 of 1950)(3) A mark shall not be registered as a trade mark if it consists exclusively of(a) the shape of goods which results from the nature of the goods themselves; or(b) the shape of goods which is necessary to obtain a technical result; or(c) the shape which gives substantial value to the goods.

ExplanationFor the purposes of this section, the nature of goods or services in

relation to which the trade mark is used or proposed to be used shall not be a ground forrefusal of registration.

Chapter IIIProcedure for and Duration of RegistrationApplication for Registration18.(1) Any person claiming to be the proprietor of a trade mark used or proposed tobe used by him, who is desirous of registering it, shall apply in writing to the Registrar in theprescribed manner for the registration of his trade mark.(2) A single application may be made for registration of a trade mark for differentclasses of goods and services and fee payable therefor shall be in respect of each such class ofgoods or services.(3) Every application under sub-section (1) shall be filed in the office of the TradeMarks Registry within whose territorial limits the principal place of business in India of theapplicant or in the case of joint applicants the principal place of business in India of theapplicant whose name is first mentioned in the application as having a place of business inIndia, is situated:Provided that where the applicant or any of the joint applicants does not carry onbusiness in India, the application shall be filed in the Office of the Trade Marks Registrywithin whose territorial limits the place mentioned in the address for service in India asdisclosed in the application, is situated.(4) Subject to the provisions of this Act, the Registrar may refuse the application ormay accept it absolutely or subject to such amendments, modifications, conditions orlimitations, if any, as he may think fit.(5) In the case of a refusal or conditional acceptance of an application, the Registrarshall record in writing the grounds for such refusal or conditional acceptance and thematerials used by him in arriving at his decision.Withdrawal of Acceptance19. Where, after the acceptance of an application for registration of a trade mark butbefore its registration, the Registrar is satisfied(a) that the application has been accepted in error; or(b) that in the circumstances of the case the trade mark should not be registered orshould be registered subject to conditions or limitations or to conditions additional to ordifferent from the conditions or limitations subject to which the application has beenaccepted,the Registrar may, after hearing the applicant, if he so desires, withdraw the acceptance andproceed as if the application had not been accepted.Advertisement of Application20.(1) When an application for registration of a trade mark has been accepted,whether absolutely or subject to conditions or limitations, the Registrar shall, as soon as maybe after acceptance, cause the application as accepted together with the conditions orlimitations, if any, subject to which it has been accepted, to be advertised in the prescribedmanner.

Provided that the Registrar may cause the application to be advertised before acceptanceif it relates to a trade mark to which sub-section (1) of section 9 and sub-sections (1) and (2)of section 11 apply, or in any other case where it appears to him that it is expedient by reasonof any exceptional circumstances so to do.(2) Where(a) an application has been advertised before acceptance under sub-section (1); or(b) after advertisement of an application,(i) an error in the application has been corrected; or(ii) the application has been permitted to be amended under section 22,the Registrar may in his discretion cause the application to be advertised again or in any casefalling under clause (b) may, instead of causing the application to be advertised again, notifyin the prescribed manner the correction or amendment made in the application.Opposition to Registration21.(1) Any person may, within three months from the date of the advertisement orre-advertisement of an application for registration or within such further period, not exceedingone month in the aggregate, as the Registrar, on application made to him in the prescribedmanner and on payment of the prescribed fee, allows, give notice in writing in the prescribedmanner to the Registrar, of opposition to the registration.(2) The Registrar shall serve a copy of the notice on the applicant for registration and,within two months from the receipt by the applicant of such copy of the notice of opposition,the applicant shall send to the Registrar in the prescribed manner a counter statement of thegrounds on which he relies for his application, and if he does not do so he shall be deemed tohave abandoned his application.(3) If the applicant sends such counter statement, the Registrar shall serve a copythereof on the person giving notice of opposition.(4) Any evidence upon which the opponent and the applicant may rely shall besubmitted in the prescribed manner and within the prescribed time to the Registrar, and theRegistrar shall give an opportunity to them to be heard, if they so desire.(5) The Registrar shall, after hearing the parties, if so required, and considering theevidence, decide whether and subject to what conditions or limitations, if any, the registrationis to be permitted, and may take into account a ground of objection whether relied upon by theopponent or not.(6) Where a person giving notice of opposition or an applicant sending acounter-statement after receipt of a copy of such notice neither resides nor carries on businessin India, the Registrar may require him to give security for the costs of proceedings beforehim, and in default of such security being duly given, may treat the opposition or application,as the case may be, as abandoned.(7) The Registrar may, on request, permit correction of any error in, or any amendmentof, a notice of opposition or a counter-statement on such terms as he thinks just.Correction and Amendment22. The Registrar may, on such terms as he thinks just, at any time, whether before orafter acceptance of an application for registration under section 18, permit the correction ofany error in or in connection with the application or permit an amendment of the application:Provided that if an amendment is made to a single application referred to insub-section (2) of section 18 involving division of such application into two or more

applications, the date of making of the initial application shall be deemed to be the date ofmaking of the divided application so divided.Registration23.(1) Subject to the provisions of section 19, when an application for registration ofa trade mark has been accepted and either(a) the application has not been opposed and the time for notice of opposition hasexpired; or(b) the application has been opposed and the opposition has been decided in favour ofthe applicant,the Registrar shall, unless the Central Government otherwise directs, register the said trademark and the trade mark when registered shall be registered as of the date of the making ofthe said application and that date shall, subject to the provisions of section 154, be deemed tobe the date of registration.(2) On the registration of a trade mark, the Registrar shall issue to the applicant acertificate in the prescribed form of the registration thereof, sealed with the seal of the TradeMarks Registry.(3) Where registration of a trade mark is not completed within twelve months from thedate of the application by reason of default on the part of the applicant, the Registrar may,after giving notice to the applicant in the prescribed manner, treat the application asabandoned unless it is completed within the time specified in that behalf in the notice.(4) The Registrar may amend the register or a certificate of registration for the purposeof correcting a clerical error or an obvious mistake.Jointly Owned Trade Marks24.(1) Save as provided in sub-section (2), nothing in this Act shall authorise theregistration of two or more persons who use a trade mark independently, or propose so to useit, as joint proprietors thereof.(2) Where the relations between two or more persons interested in a trade mark aresuch that no one of them is entitled as between himself and the other or others of them to useit except(a) on behalf of both or all of them; or(b) in relation to an article or service with which both or all of them are connected inthe course of trade,those persons may be registered as joint proprietors of the trade mark, and this Act shall haveeffect in relation to any rights to the use of the trade mark vested in those persons as if thoserights had been vested in a single person.Duration, Renewal, Removal and Restoration of Registration25.(1) The registration of a trade mark, after the commencement of this Act, shall befor a period of ten years, but may be renewed from time to time in accordance with theprovisions of this section.(2) The Registrar shall, on application made by the registered proprietor of a trade markin the prescribed manner and within the prescribed period and subject to payment of theprescribed fee, renew the registration of the trade mark for a period of ten years from the dateof expiration of the original registration or of the last renewal of registration, as the case maybe (which date is in this section referred to as the expiration of the last registration).(3) At the prescribed time before the expiration of the last registration of a trade markthe Registrar shall send notice in the prescribed manner to the registered proprietor of the date

of expiration and the conditions as to payment of fees and otherwise upon which a renewal ofregistration may be obtained, and, if at the expiration of the time prescribed in that behalfthose conditions have not been duly complied with the Registrar may remove the trade markfrom the register:Provided that the Registrar shall not remove the trade mark from the register if anapplication is made in the prescribed form and the prescribed fee and surcharge is paid withinsix months from the expiration of the last registration of the trade mark and shall renew theregistration of the trade mark for a period of ten years under sub-section (2).(4) Where a trade mark has been removed from the register for non-payment of theprescribed fee, the Registrar shall, after six months and within one year from the expiration ofthe last registration of the trade mark, on receipt of an application in the prescribed form andon payment of the prescribed fee, if satisfied that it is just so to do, restore the trade mark tothe register and renew the registration of the trade mark either generally or subject to suchconditions or limitations as he thinks fit to impose, for a period of ten years from theexpiration of the last registration.Effect of Removal from Register for Failure to Pay Fee for Renewal26. Where a trade mark has been removed from the register for failure to pay the fee forrenewal, it shall nevertheless, for the purpose of any application for the registration of anothertrade mark during one year, next after the date of the removal, be deemed to be a trade markalready on the register, unless the tribunal is satisfied either(a) that there has been no bona fide trade use of the trade mark which has beenremoved during the two years immediately preceding its removal; or(b) that no deception or confusion would be likely to arise from the use of the trademark which is the subject of the application for registration by reason of any previous use ofthe trade mark which has been removed.Chapter VIUse of Trade Marks and Registered UsersProposed use of Trade Mark by Company to Be Formed etc.46.(1) No application for the registration of a trade mark in respect of any goods orservices shall be refused nor shall permission for such registration be withheld, on the groundonly that it appears that the applicant does not use or propose to use the trade mark if theRegistrar is satisfied that(a) a company is about to be formed and registered under the Companies Act, 1956 andthat the applicant intends to assign the trade mark to that company with a view to the usethereof in relation to those goods or services by the company, or(1 of 1956)(b) the proprietor intends it to be used by a person, as a registered user after theregistration of the trade mark.(2) The provisions of section 47 shall have effect, in relation to a trade mark registeredunder the powers conferred by this sub-section, as if for the reference, in clause (a) ofsub-section (1) of that section, to the intention on the part of an applicant for registration thata trade mark should be used by him there were substituted a reference to the intention on hispart that it should be used by the company or registered user concerned.(3) The tribunal may, in a case to which sub-section (1) applies, require the applicant togive security for the costs of any proceedings relating to any opposition or appeal, and in

default of such security being duly given, may treat the application as abandoned.(4) Where in a case to which sub-section(1) applies, a trade mark in respect of anygoods or services is registered in the name of an applicant who, relies on intention to assignthe trade mark to a company, then, unless within such period as may be prescribed or withinsuch further period not exceeding six months as the Registrar may, on application being madeto him in the prescribed manner, allow, the company has been registered as the proprietor ofthe trade mark in respect of those goods or services, the registration shall cease to have effectin respect thereof at the expiration of that period and the Registrar shall amend the registeraccordingly.Removal from Register and Imposition of Limitationson Ground of Non Use47.(1) A registered trade mark may be taken off the register in respect of the goodsor services in respect of which it is registered on application made in the prescribed manner tothe Registrar or the Appellate Board by any person aggrieved on the ground either(a) that the trade mark was registered without any bona fide intention on the part of theapplicant for registration that it should be used in relation to those goods or services by himor, in a case to which the provisions of section 46 apply, by the company concerned or theregistered user, as the case may be, and that there has, in fact, been no bona fide use of thetrade mark in relation to those goods or services by any proprietor thereof for the time beingup to a date three months before the date of the application; or(b) that up to a date three months before the date of the application, a continuous periodof five years from the date on which the trade mark is actually entered in the register or longerhad elapsed during which the trade mark was registered and during which there was no bonafide use thereof in relation to those goods or services by any proprietor thereof for the timebeing:Provided that except where the applicant has been permitted under section 12 to registeran identical or nearly resembling trade mark in respect of the goods or services in question, orwhere the tribunal is of opinion that he might properly be permitted so to register such a trademark, the tribunal may refuse an application under clause (a) or clause (b) in relation to anygoods or services, if it is shown that there has been, before the relevant date or during therelevant period, as the case may be, bona fide use of the trade mark by any proprietor thereoffor the time being in relation to(i) goods or services of the same description, or(ii) goods or services associated with those goods or services of that description beinggoods or services, as the case may be, in respect of which that trade mark is registered.(2) Where in relation to any goods or services in respect of which a trade mark isregistered(a) the circumstances referred to in clause (b) of sub-section (1) are shown to exist sofar as regards non-use of the trade mark in relation to goods to be sold, or otherwise traded ina particular place in India (otherwise than for export from India), or in relation to goods to beexported to a particular market outside India; or in relation to services for use or available foracceptance in a particular place in India or for use in a particular market outside India; and(b) a person has been permitted under section 12 to register an identical or nearlyresembling trade mark in respect of those goods, under a registration extending to use inrelation to goods to be so sold, or otherwise traded in, or in relation to goods to be so

exported, or in relation to services for use or available for acceptance in that place or for usein that country, or the tribunal is of opinion that he might properly be permitted so to registersuch a trade mark.on application by that person in the prescribed manner to the Appellate Board or to theRegistrar, the tribunal may impose on the registration of the first mentioned trade mark suchlimitations as it thinks proper for securing that that registration shall cease to extend to suchuse.(3) As applicant shall not be entitled to rely for the purpose of clause (b) ofsub-section (1) or for the purposes of sub-section (2) on any non-use of a trade mark which isshown to have been due to special circumstances in the trade, which includes restrictions onthe use of the trade mark in India imposed by any law or regulation and not to any intention toabandon or not to use the trade mark in relation to goods or services to which the applicationrelates.Registered User48.(1) Subject to the provisions of section 49, a person other than the registeredproprietor of a trade mark may be registered as a registered user thereof in respect of any orall of the goods or services in respect of which the trade mark is registered.(2) The permitted use of a trade mark shall be deemed to be used by the proprietorthereof, and shall be deemed not to be used by a person other than the proprietor, for thepurposes of section 47 or for any other purpose for which such use is material under this Actor any other law.Registration as Registered User49.(1) Where it is proposed that a person should be registered as a registered user ofa trade mark, the registered proprietor and the proposed registered user shall jointly apply inwriting to the Registrar in the prescribed manner, and every such application shall beaccompanied by(a) the agreement in writing or a duly authenticated copy thereof, entered into betweenthe registered proprietor and the proposed registered user with respect to the permitted use ofthe trade mark; and(b) an affidavit made by the registered proprietor or by some person authorised to thesatisfaction of the Registrar to act on his behalf,(i) giving particulars of the relationship, existing or proposed, between the registeredproprietor and the proposed registered user, including particulars showing the degree ofcontrol by the proprietor over the permitted use which their relationship will confer andwhether it is a term of their relationship that the proposed registered user shall be the soleregistered user or that there shall be any other restriction as to persons for whose registrationas registered users application may be made;(ii) stating the goods or services in respect of which registration is proposed;(iii) stating the conditions or restrictions, if any, proposed with respect to thecharacteristics of the goods or services, to the mode or place of permitted use, or to any othermatter;(iv) stating whether the permitted use is to be for a period or without limit of period,and, if for a period, the duration thereof, and(c) such further documents or other evidence as may be required by the Registrar or asmay be prescribed.

(2) When the requirements of sub-section (1) have been complied with, the Registrarshall register the proposed registered user in respect of the goods or services as to which he isso satisfied.(3) The Registrar shall issue notice in the prescribed manner of the registration of aperson as a registered user, to other registered users of the trade mark, if any.(4) The Registrar shall, if so requested by the applicant, take steps for securing thatinformation given for the purposes of an application under this section (other than mattersentered in the register) is not disclosed to rivals in trade.Power of Registrar for Variation or Cancellation ofRegistration as Registered User50.(1) Without prejudice to the provisions of section 57, the registration of a personas registered user(a) may be varied by the Registrar as regards the goods or services in respect of whichit has effect on the application in writing in the prescribed manner of the registered proprietorof the trade mark;(b) may be cancelled by the Registrar on the application in writing in the prescribedmanner of the registered proprietor or of the registered user or of any other registered user ofthe trade mark;(c) may be cancelled by the Registrar on the application in writing in the prescribedmanner of any person on any of the following grounds, namely:(i) that the registered user has used the trade mark otherwise than in accordance withthe agreement under clause (a) of sub-section (1) of section 49 or in such way as to cause orto be likely to cause, deception or confusion;(ii) that the proprietor or the registered user misrepresented, or failed to disclose, somefact material to the application for registration which if accurately represented or disclosedwould not have justified the registration of the registered user;(iii) that the circumstances have changed since the date of registration in such a waythat at the date of such application for cancellation they would not have justified registrationof the registered user;(iv) that the registration ought not to have been effected having regard to rights vestedin the applicant by virtue of a contract in the performance of which he is interested;(d) may be cancelled by the Registrar on his own motion or on the application inwriting in the prescribed manner by any person, on the ground that any stipulation in theagreement between the registered proprietor and the registered user regarding the quality ofthe goods or services in relation to which the trade mark is to be used is either not beingenforced or is not being complied with;(e) may be cancelled by the Registrar in respect of any goods or services in relation towhich the trade mark is no longer registered.(2) The Registrar shall issue notice in the prescribed manner in respect of everyapplication under this section to the registered proprietor and each registered user (not beingthe applicant) of the trade mark.(3) The procedure for cancelling a registration shall be such as may be prescribed;Provided that before cancelling of registration, the registered proprietor shall be given areasonable opportunity of being heard.Power of Registrar to Call for Information Relating to

Agreement in Respect of Registered Users

51.(1) The Registrar may at any time during the continuance of the registration of theregistered user, by notice in writing, require the registered proprietor to confirm to him withinone month that the agreement filed under clause (a) of sub-section (1) of section 49 continuesto be in force.(2) If the registered proprietor fails to furnish the confirmation within one month asrequired under sub-section (1), the registered user shall cease to be the registered user on theday immediately after the expiry of the said period and the Registrar shall notify the same.Right of Registered User to Take Proceedings Against Infringement52.(1) Subject to any agreement subsisting between the parties, a registered user mayinstitute proceedings for infringement in his own name as if he were the registered proprietor,making the registered proprietor a defendant and the rights and obligations of such registereduser in such case being concurrent with those of the registered proprietor.(2) Notwithstanding anything contained in any other law, a registered proprietor soadded as defendant shall not be liable for any costs unless he enters an appearance and takespart in the proceedings.No Right of Permitted User to Take Proceeding Against Infringement53. A person referred to in sub-clause (ii) of clause (r) of sub-section (1) of section 2shall have no right to institute any proceeding for any infringement.Registered User not to Have Right of Assignment of Transmission54. Nothing in this Act shall confer on a registered user of a trade mark any assignableor transmissible right to the use thereof.Explanation I.The right of a registered user of a trade mark shall not be deemed tohave been assigned or transmitted within the meaning of this section in the following cases,namely:(a) where the registered user being an individual enters into a partnership with anyother person for carrying on the business concerned; but in any such case the firm may usethe trade mark, if otherwise in force, only for so long as the registered user is a member of thefirm;(b) where the registered user being a firm subsequently undergoes a change in itsconstitution; but in any case the reconstituted firm may use the trade mark, if otherwise inforce, only for so long as any partner of the original firm at the time of its registration asregistered user, continues to be a partner of the reconstituted firm.Explanation II.For the purposes of Explanation I, firm has the same meaning as inthe Indian Partnership Act, 1932.(9 of 1932)User of One of Associated or Substantially IdenticalTrade Marks Equivalent to Use of Another55.(1) Where under the provisions of this Act, use of a registered trade mark isrequired to be proved for any purpose, the tribunal may, if and, so far as it shall think right,accept use of a registered associated trade mark, or of the trade mark with additions oralterations not substantially affecting its identity, as an equivalent for the use required to beproved.(2) The use of the whole of a registered trade mark shall, for the purpose of this Act, bedeemed to be also use of any trade mark being a part thereof and registered in accordancewith sub-section (1) of section 15 in the name of the same proprietor.

(3) Notwithstanding anything in section 32, the use of part of the registered trade markin sub-section (2) shall not be conclusive as to its evidence of distinctiveness for any purposeunder this Act.Use of Trade Mark for Export Trade and UseWhen Form of Trade Connection Changes56.(1) The application in India of trade mark to goods to be exported from India or inrelation to services for use outside India and any other act done in India in relation to goods tobe so exported or services so rendered outside India which, if done in relation to goods to besold or services provided or otherwise traded in within India would constitute use of a trademark therein, shall be deemed to constitute use of the trade mark in relation to those goods orservices for any purpose for which such use is material under this Act or any other law.(2) The use of a registered trade mark in relation to goods or services between whichand the person using the mark any form of connection in the course of trade subsists shall notbe deemed to be likely to cause deception or confusion on the ground only that the mark hasbeen or is used in relation to goods or services between which and the said person or apredecessor in title of that person a different form of connection in the course of tradesubsisted or subsists.Chapter XIAppellate BoardEstablishment of Appellate Board83. The Central Government shall, by notification in the Official Gazette, establish anAppellate Board to be known as the Intellectual Property Appellate Board to exercise thejurisdiction, powers and authority conferred on it by or under this Act.Composition of Appellate Board84.(1) The Appellate Board shall consist of a Chairman, Vice-Chairman and suchnumber of other Members, as the Central Government may deem fit and, subject to the otherprovisions of this Act, the jurisdiction, powers and authority of the Appellate Board may beexercised by Benches thereof.(2) Subject to the other provisions of this Act, a Bench shall consist of one JudicialMember and one Technical Member and shall sit at such place as the Central Governmentmay, by notification in the Official Gazette, specify.(3) Notwithstanding anything contained in sub-section (2), the Chairman(a) may, in addition to discharging the functions of the Judicial Member or TechnicalMember of the Bench to which he is appointed, discharge the functions of the JudicialMember or, as the case may be, the Technical Member, of any other Bench;(b) may transfer a Member from one Bench to another Bench;(c) may authorise the Vice-Chairman, the Judicial Member or the Technical Memberappointed to one Bench to discharge also the functions of the Judicial Member or theTechnical Member, as the case may be, of another Bench.(4) Where any Benches are constituted, the Central Government may, from time totime, by notification, make provisions as to the distribution of the business of the AppellateBoard amongst the Benches and specify the matters which may be dealt with by each Bench.(5) If any question arises as to whether any matter falls within the purview of thebusiness allocated to a Bench, the decision of the Chairman shall be final.Explanation.For the removal of doubts, it is hereby declared that the expression

matter includes an appeal under section 91.

(6) If the Members of a Bench differ in opinion on any point, they shall state the pointor points on which they differ, and make a reference to the Chairman who shall either hear thepoint or points himself or refer the case for hearing on such point or points by one or more ofthe other Members and such point or points shall be decided according to the opinion of themajority of the Members who have heard the case, including those who first heard it.Qualifications for Appointment as Chairman,Vice Chairman, or Other Members85.(1) A person shall not be qualified for appointment as the Chairman unless he(a) is, or has been, a Jude of a High Court; or(b) has, for at least two years, held the office of a Vice Chairman.(2) A person shall not be qualified for appointment as the Vice Chairman, unless he(a) has, for at least two years, held the office of a Judicial Member or a TechnicalMember; or(b) has been a member of the Indian Legal Service and has held a post in Grade I ofthat service or any higher post for at least five years.(3) A person shall not be qualified for appointment as a Judicial Member, unless he(a) has been a member of the Indian Legal Service and has held the post in Grade I ofthat service for at least three years; or(b) has, for at least ten years, held a civil judicial office.(4) A person shall not be qualified for appointment as a Technical Member, unlesshe(a) has, for at least ten years, exercised functions of a tribunal under this Act or underthe Trade and Merchandise Marks Act, 1958, or both, and has held a post not lower than thepost of a Joint Registrar for at least five years; or(43 of 1958)(b) has, for at least ten years, been an advocate of a proven specialised experience intrade mark law.(5) Subject to the provisions of sub-section(6), the Chairman, Vice Chairman and everyother Member shall be appointed by the President of India.(6) No appointment of a person as the Chairman shall be made except after consultationwith the Chief Justice of India.Term of Office of Chairman, Vice chairman and Other Members86. The Chairman, Vice Chairman or other Members shall hold office as such for aterm of five years from the date on which he enters upon his office or until he attains,(a) in the case of Chairman and Vice-Chairman, the age of sixty five years; and(b) in the case of a Member, the age of sixty two years.Whichever is earlier.Vice-Chairman or Senior-Most Member to Act asChairman or Discharge his Functions in Certain Circumstances87.(1) In the event of or any vacancy in the office of the Chairman by reasons of hisdeath, resignation or otherwise, the Vice Chairman and in his absence the senior mostMember shall act as Chairman until the date on which a new Chairman, appointed inaccordance with the provisions of this Act to fill such vacancy, enters upon his office.(2) When the Chairman is unable to discharge his functions owing to his absence,

illness or any other cause, the Vice Chairman and in his absence the senior-most Membershall discharge the functions of the Chairman until the date on which the Chairman resumeshis duty.Salaries, Allowances and Other Terms and Conditions of Serviceof Chairman, Vice Chairman and Other Members88.(1) The salaries and allowances payable to, and other terms and conditions ofservice (including pension, gratuity and other retirement benefits), of the Chairman, ViceChairman and other Members shall be such as may be prescribed.(2) Notwithstanding anything contained in sub-section (1), a person who, immediatelybefore the date of assuming office as the Chairman, Vice Chairman or other Member was inservice of Government, shall be deemed to have retired from service on the date on which heenters upon office as the Chairman, Vice Chairman or other Member.Resignation and Removal89.(1) The Chairman, Vice chairman or any other Member may, by notice in writingunder his hand addressed to the President of India, resign his office:Provided that the Chairman, Vice Chairman or any other Member shall, unless he ispermitted by the President of India to relinquish his office sooner, continue to hold office untilthe expiry of three months from the date of receipt of such notice or until a person dulyappointed as his successor enters upon his office or until the expiry of his term of office,whichever is earlier.(2) The Chairman, Vice Chairman or any other Member shall not be removed from hisoffice except by an order made by the President of India on the ground of provedmisbehaviour or incapacity after an inquiry made by a Judge of the Supreme Court in whichthe Chairman, Vice Chairman or other Member had been informed of the charges against himand given a reasonable opportunity of being heard in respect of those charges.(3) The Central Government may, by rules, regulate the procedure for the investigationof misbehaviour or incapacity of the Chairman, Vice Chairman or other Member referred to insub-section (2).Staff of Appellate Board90.(1) The Central Government shall determine the nature and categories of theofficers and other employees required to assist the Appellate Board in the discharge of itsfunctions and provide the Appellate Board with such officers and other employees as it maythink fit.(2) The salaries and allowances and conditions of service of the officers and otheremployees of the Appellate Board shall be such as may be prescribed.(3) The officers and other employees of the Appellate Board shall discharge theirfunctions under the general superintendence of the Chairman in the manner as may beprescribed.Appeals to Appellate Board91.(1) Any person aggrieved by an order or decision of the Registrar under this Act,or the rules made thereunder may prefer an appeal to the Appellate Board within three monthsfrom the date on which the order or decision sought to be appealed against is communicatedto such person preferring the appeal.(2) No appeal shall be admitted if it is preferred after the expiry of the period specifiedunder sub-section (1):Provided that an appeal may be admitted after the expiry of the period specified

therefor, if the appellant satisfies the Appellate Board that he had sufficient cause for notpreferring the appeal within the specified period.(3) An appeal to the Appellate Board shall be in the prescribed form and shall beverified in the prescribed manner and shall be accompanied by a copy of the order or decisionappealed against and by such fees as may be prescribed.Procedure and Powers of Appellate Board92.(1) The Appellate Board shall not be bound by the procedure laid down in theCode of Civil Procedure, 1908 but shall be guided by principles of natural justice and subjectto the provisions of this Act and the rules made thereunder, the Appellate Board shall havepowers to regulate its own procedure including the fixing of places and times of its hearing.(5 of 1908)(2) The Appellate Board shall have, for the purpose of discharging its functions underthis Act, the same powers as are vested in a civil court under the Code of Civil Procedure,1908 while trying a suit in respect of the following matters, namely:(5 of 1908)(a) Receiving evidence;(b) Issuing commissions for examination of witnesses;(c) requisitioning any public record; and(d) any other matter which may be prescribed.(3) Any proceeding before the Appellate Board shall be deemed to be a judicialproceeding within the meaning of sections 193 and 228, and for the purpose of section 196, ofthe Indian Penal Code, and the Appellate Board shall be deemed to be a civil court for all thepurposes of section 195 and Chapter XXVI of the Code of Criminal Procedure, 1973.(45 of 1860 & 2 of 1974)Bar of Jurisdiction of Courts, etc.93. No court or other authority shall have or, be entitled to, exercise any jurisdiction,powers or authority in relation to the matters referred to in sub-section (1) of section 91.Bar to Appear Before Appellate Board94. On ceasing to hold office, the Chairman, Vice-Chairman or other Members shallnot appear before the Appellate Board or the Registrar.Conditions as to Making of Interim Orders95. Notwithstanding anything contained in any other provisions of this Act or in anyother law for the time being in force, no interim order (whether by way of injunction or stayor any other manner) shall be made on, or in any proceedings relating to, an appeal unless(a) Copies of such appeal and of all documents in support of the plea for such interimorder are furnished to the party against whom such appeal is made or proposed to be made;and(b) opportunity is given to such party to be heard in the matter.Power of Chairman to Transfer Cases from one Bench to Another96. On the application of any of the parties and after notice to the parties, and afterhearing such of them as he may desire to be heard, or on his own motion without such notice,the Chairman may transfer any case pending before one Bench, for disposal, to any otherBench.Procedure for Application for Rectification, etc. Before Appellate Board97.(1) An application for rectification of the register made to the Appellate Board

under section 57 shall be in such form as may be prescribed.

(2) A certified copy of every order or judgement of the Appellate Board relating to aregistered trade mark under this Act shall be communicated to the Registrar by the Board andthe Registrar shall give effect to the order of the Board and shall, when so directed, amend theentries in, or rectify, the register in accordance with such order.Appearance of Registrar in Legal Proceedings98.(1) The Registrar shall have the right to appear and be heard(a) in any legal proceedings before the Appellate Board in which the relief soughtincludes alteration or rectification of the register or in which any question relating to thepractice of the Trade Marks Registry is raised;(b) in any appeal to the Board from an order of the Registrar on an application forregistration of a trade mark(i) which is not opposed, and the application is either refused by the Registrar or isaccepted by him subject to any amendments, modifications, conditions or limitations, or(ii) which has been opposed and the Registrar considers that his appearance isnecessary in the public interest,and the Registrar shall appear in any case if so directed by the Board.(2) Unless the Appellate Board otherwise directs, the Registrar may, in lieu ofappearing, submit a statement in writing signed by him, giving such particulars as he thinksproper of the proceedings before him relating to the matter in issue or of the grounds of anydecision given by him affecting it, or of the practice of the Trade Marks Registry in like cases,or of other matters relevant to the issues and within his knowledge as Registrar, and suchstatement shall be evidence in the proceeding.Costs of Registrar in Proceedings Before Appellate Board99. In all proceedings under this Act before the Appellate Board the costs of theRegistrar shall be in the discretion of the Board, but the Registrar shall not be ordered to paythe costs of any of the parties.Transfer of Pending Proceedings to Appellate Board100. All cases of appeals against any order of decision of the Registrar and all casespertaining to rectification of register, pending before any High Court, shall be transferred tothe Appellate Board from the date as notified by the Central Government in the OfficialGazette and the Appellate Board may proceed with the matter either de novo or from the stageit was so transferred.Chapter XIIOffences, Penalties and ProcedureMeaning of Applying Trademarks and Trade Descriptions101.(1) A person shall be deemed to apply a trade mark or mark or trade descriptionto goods or services who(a) applies it to the goods themselves or uses it in relation to services; or(b) applies it to any package in or with which the goods are sold, or exposed for sale, orhad in possession for sale or for any purpose of trade or manufacture; or(c) places, encloses or annexes any goods which are sold, exposed for sale or had inpossession for sale or for any purpose of trade or manufacture, in or with any package or otherthing to which a trade mark or mark or trade description has been applied; or(d) uses a trade mark or mark or trade description in any manner reasonably likely to

lead to the belief that the goods or services in connection with which it is used are designatedor described by that trade mark or mark or trade description; or(e) in relation to the goods or services uses a trade mark or trade description in anysign, advertisement, invoice, catalogue, business letter, business paper, price list or othercommercial document and goods are delivered or services are rendered to a person inpursuance of a request or order made by reference to the trade mark or trade description as soused.(2) A trade mark or mark or trade description shall be deemed to be applied to goodswhether it is woven in, impressed on, or otherwise worked into, or annexed or affixed to, thegoods or to any package or other thing.Suit for Infringement, etc. to Be Instituted Before District Court134.(1) No suit(a) for the infringement of a registered trade mark; or(b) relating to any right in a registered trade mark; or(c) for passing off arising out of the use by the defendant of any trade mark which isidentical with or deceptively similar to the plaintiffs trade mark, whether registered orunregistered,shall be instituted in any court inferior to a District Court having jurisdiction to try the suit.For the purpose of clauses (a) and (b) of sub-section (1), a District Court havingjurisdiction shall, notwithstanding anything contained in the Code of Civil Procedure,1908or any other law for the time being in force, include a District Court within the local limits ofwhose jurisdiction , at the time of the institution of the suit or other proceeding, the personinstituting the suit or proceeding, or, where there are more than one such persons any of them,actually and voluntarily resides or carries on business or personally works for gain.(5 of 1908)Explanation.For the purposes of sub-section (2), person includes the registeredproprietor and the registered user.Relief in Suits for Infringement or for Passing Off135.(1) The relief which a court may grant in any suit for infringement or for passingoff referred to in section 134 includes injunction (subject to such terms, if any, as the courtthinks fit) and at the option of the plaintiff, either damages or an account of profits, togetherwith or without any order for the delivery-up of the infringing labels and marks fordestruction or erasure.(2) The order of injunction under sub-section (1) may include an ex parte injunction orany interlocutory order for any of the following mattes, namely:(a) for discovery of documents;(b) preserving of infringing goods, documents or other evidence which are related tothe subject-matter of the suit;(c) restraining the defendant from disposing of or dealing with his assets in a mannerwhich may adversely affect plaintiffs ability to recover damages, costs or other pecuniaryremedies which may be finally awarded to the plaintiff.(3) Notwithstanding anything contained in sub-section (1), the court shall not grantrelief by way of damages (other than nominal damages) or on account of profits in any case(a) where in a suit for infringement of a trade mark, the infringement complained of isin relation to a certification trade mark or collective mark; or

(b) where in a suit for infringement the defendant satisfies the court(a) for the infringement of a registered trade mark; or(b) relating to any right in a registered trade mark; or(c) for passing off arising out of the use by the defendant of any trade mark which isidentical with or deceptively similar to the plaintiffs trade mark, whether registered orunregistered,shall be instituted in any court inferior to a District Court having jurisdiction to try the suit.For the purpose of clauses (a) and (b) of sub-section (1), a District Court havingjurisdiction shall, notwithstanding anything contained in the Code of Civil Procedure,1908or any other law for the time being in force, include a District Court within the local limits ofwhose jurisdiction , at the time of the institution of the suit or other proceeding, the personinstituting the suit or proceeding, or, where there are more than one such persons any of them,actually and voluntarily resides or carries on business or personally works for gain.(5 of 1908)Explanation.For the purposes of sub-section (2), person includes the registeredproprietor and the registered user.Relief in Suits for Infringement or for Passing Off135.(1) The relief which a court may grant in any suit for infringement or for passingoff referred to in section 134 includes injunction (subject to such terms, if any, as the courtthinks fit) and at the option of the plaintiff, either damages or an account of profits, togetherwith or without any order for the delivery-up of the infringing labels and marks fordestruction or erasure.(2) The order of injunction under sub-section (1) may include an ex parte injunction orany interlocutory order for any of the following mattes, namely:(a) for discovery of documents;(b) preserving of infringing goods, documents or other evidence which are related tothe subject-matter of the suit;(c) restraining the defendant from disposing of or dealing with his assets in a mannerwhich may adversely affect plaintiffs ability to recover damages, costs or other pecuniaryremedies which may be finally awarded to the plaintiff.(3) Notwithstanding anything contained in sub-section (1), the court shall not grantrelief by way of damages (other than nominal damages) or on account of profits in any case(a) where in a suit for infringement of a trade mark, the infringement complained of isin relation to a certification trade mark or collective mark; or(b) where in a suit for infringement the defendant satisfies the court(i) that at the time he commenced to use the trade mark complained of in the suit hewas unaware and had no reasonable ground for believing that the trade mark of the plaintiffwas on the register or that the plaintiff was a registered user using by way of permitted use;and(ii) that when he became aware of the existence and nature of the plaintiffs right in thetrade mark, he forthwith ceased to use the trade mark in relation to goods or services inrespect of which it was registered,; or(c) where in a suit for passing off, the defendant satisfies the court(i) that at the time he commenced to use the trade mark complained of in the suit, hewas unaware and had no reasonable ground for believing that the trade mark of the plaintiffwas in use; and

(ii) that when he became aware of the existence and nature of the plaintiffs trade markhe forthwith ceased to use the trade mark complained of.Agents145. Where, by or under this Act, any act, other than the making of an affidavit, isrequired to be done before the Registrar by any person, the act may, subject to the rules madein this behalf, be done instead of by that person himself, by a person duly authorised in theprescribed manner, who is(a) a legal practitioner, or(b) a person registered in the prescribed manner as a trade marks agent, or(c) a person in the sole and regular employment of the principal.Marks Registered by an Agent or Representative Without Authority146. If an agent or a representative of the proprietor of a registered trade mark, withoutauthority uses or attempts to register or registers the mark in his own name, the proprietorshall be entitled to oppose the registration applied for or secure its cancellation or rectificationof the register so as to bring him as the registered proprietor of the said mark by assignment inhis favour:Provided that such action shall be taken within three years of the registered proprietor ofthe trade mark becoming aware of the conduct of the agent or representative.Indexes147.There shall be kept under the direction and supervision of the Registrar(a) an index of registered trade marks:(b) an index of trade marks in respect of which applications for registration arepending;(c) an index of the names of the proprietors of registered trade marks; and(d) an index of the names of registered users.Documents Open to Public Inspection148.(1) Save as otherwise provided in sub-section (4) of section 49,(a) the register and any document upon which any entry in the register is based;(b) every notice of opposition to the registration of a trade mark application forrectification before the Registrar, counter-statement thereto, and any affidavit or documentfiled by the parties in any proceedings before the Registrar;(c) all regulations deposited under section 63 or section74, and all applications undersection 66 or section 77 for varying such regulations;(d) the indexes mentioned in section 147; and(e) such other documents as the Central Government may, by notification in theOfficial Gazette, specify,shall, subject to such conditions as may be prescribed, be open to public inspection at theTrade Marks Registry:Provided that when such register is maintained wholly or partly on computer, theinspection of such register under this section shall be made by inspecting the computer printout of the relevant entry in the register so maintained on computer.(2) Any person may, on an application to the Registrar and on payment of such fees asmay be prescribed, obtain a certified copy of any entry in the register or any documentreferred to in sub-section (1).

What is Cybersquatting?Cybersquatting is the practice of registering an Internet domain name that is likely to be wantedby another person, business, or organization in the hope that it can be sold to them for a profit. Itinvolves the registration of trademarks and trade names as domain names by third parties, whodo not possess rights in such names. Simply put, cybersquatters (or bad faith imitators) registertrade-marks, trade names, business names and so on, belonging to third parties with the commonmotive of trading on the reputation and goodwill of such third parties by either confusingcustomers or potential customers, and at times, to even sell the domain name to the rightfulowner at a profit.What is a Domain Name?Every resource on the Internet, such as a web page or a file of information has its own addressknown as Uniform Resource Locator URL. A domain name is part of this address which isassigned to each computer or service on the Internet. Domain name system maps names to aseries of number or IP address. These numbers are then linked with an easily read andremembered address - the domain name. The domain name need not change if the computer orservice changes, whereas the series of numbers will. The domain name is intended to be moremeaningful to human beings than the series of numbers. The numbers referred to above arelinked with the domain name "rs. internic.net". People who are using the domain name cantherefore choose an easily remembered, and importantly, easily recognizable names incyberspace.The Internet Corporation of Assigned Names and Numbers (ICANN) is responsible for theadministration of top level domain names. In assigning a domain, NSI uses a multi level system,including a top level domain (TLD) such as .com and .net which are considered worldwidegeneric. First step to acquire a domain name is to contact the administrator of the TLD and if theidentical requested domain name is not already assigned, the name will be then approved by theadministrator. That allocation of IP addresses and domain names worldwide is done centrally.There is a specific registration process involved. The IANA is the central internet authority thatallocates IP addresses and domain names through the INTERNIC1Laws in IndiaUnlike many developed countries, in India we have no Domain Name Protection Law andcyber squatting cases are decided under Trade Mark Act, 1999.That although the Indian Courts have drawn the distinction between trade mark and domainname; wherein the Hon'ble Supreme Court in Satyam Infoway Ltd vs Sifynet Solutions Pvt Ltd;AIR 2004SC3540 has observed that the"distinction lies in the manner in which the two operate. A trademark is protected by the laws ofa country where such trademark may be registered. Consequently, a trade mark may havemultiple registrations in many countries throughout the world. On the other hand, since theinternet allows for access without any geographical limitation, a domain name is potentiallyaccessible irrespective of the geographical location of the consumers. The outcome of thispotential for universal connectivity is not only that a domain name would require worldwideexclusivity but also that national laws might be inadequate to effectively protect a domain name".The Indian Courts though have recognized the lacuna, however, in the absence of a explicit

legislation, courts apply provisions of the Trade Marks Act to such disputes. The Court in Case(Supra) further observed that"As far as India is concerned, there is no legislation which explicitly refers to dispute resolutionin connection with domain names. But although the operation of the Trade Marks Act, 1999 itselfis not extra territorial and may not allow for adequate protection of domain names, this does notmean that domain names are not to be legally protected to the extent possible under the lawsrelating to passing off".Dispute ResolutionDispute involving bad faith registrations are typically resolved using the Uniform Domain NameDispute Resolution Policy (UDRP) process developed by the ICANN. Under UDRP, WIPO isthe leading ICANN accredited domain name dispute resolution service provider and wasestablished as a vehicle for promoting the protection, dissemination, and the use of intellectualproperty throughout the world. India is one of the 171 states of the world which are members ofWIPO.A person may complain before the administration dispute resolution service providers listed byICANN under Rule 4 (a) that:(i) A domain name is "identical or confusingly similar to a trade mark or service mark" in whichthe complainant has rights; and(ii) The domain name owner/registrant has no right or legitimate interest in respect of the domainname; and(iii) A domain name has been registered and is being used in bad faith.Rule 4 (b) has listed, by way of illustration, the following four circumstances as evidence ofregistration and the use of a domain name in bad faith:(i) Circumstances indicating that the domain name owner/registrant has registered or acquiredthe domain name primarily for the purpose of selling, renting or otherwise transferring thedomain name registration to the complainant who is the owner of the trade mark or service mark;or to a competitor of that complainant for valuable consideration in excess of its documented outof pocket costs, directly related to the domain name; or(ii) The domain name owner/registrant has registered the domain name in order to prevent theowner of the trade mark or service mark from reflecting the mark in a corresponding domainname, provided that it has engaged in a pattern of such conduct; or(iii) The domain name owner/registrant has registered the domain name primarily for the purposeof disrupting the business of a competitor; or(iv) By using the domain name, the domain name owner/registrant has intentionally attempted toattract, for commercial gain internet users to its web site or other online location by creating alikely hood of confusion with the complainants mark as to the source, sponsorship, affiliation, orendorsement of the domain name owner/ registrant web site or location or of a product or serviceon its web site or location.India has also established its own registry by the name INRegistry under the authority ofNational Internet Exchange of India (NIXI), wherein the dispute related to the domain name areresolved under the .IN Dispute Resolution Policy (INDRP). The Policy has been formulated inline with internationally accepted guidelines, and with the relevant provisions of the Indian

Information Technology Act 2000.

Under InRegistry, disputes are resolved under .IN Domain Name Dispute Resolution Policy(INDRP) and INDRP Rules of Procedure. These rules describe how to file a complaint, fees,communications and the procedure involved.Role of JudiciaryThough domain names are not defined under any Indian law or are covered under any specialenactment, the Courts in India has applied Trade Marks Act, 1999 to such cases.Like in other cases under Trademarks Act, 1999 two kind of reliefs are available:1. Remedy of infringement2. Remedy of passing offRemedy of Infringement: Trade mark Act permits owner of the trade mark to avail the remedy ofinfringement only when the trade mark is registered. Remedy of Passing off: No registration ofthe trade mark is required in case the owner inteeds to avail the relief under passing off.The first case that came up before the Indian Courts was Yahoo! Inc. v. Akash Arora nadAnothers [1999 II AD (Delhi)]; in which an attempt was made to use the domain name<yahooindia.com> for Internet related services as against domain name i.e. <yahoo.com>, TheCourt observed that usually the degree of the similarity of the marks is vitally important andsignificant in an action for passing off for in such a case there is every possibility and likelihoodof confusion and deception being caused. When both the domain names are considered, it iscrystal clear that the two names being almost identical or similar in nature, there is everypossibility of an Internet user being confused and deceived in believing that both the domainnames belong to one common source and connection, although the two belongs to two differentconcerns.In Tata Sons Limited and Anr Vs fashion ID Limited (2005) 140 PLR 12; the Hon'ble HighCourt of Delhi Court held that "The use of the same or similar domain name may lead to adiversion of users which could result from such users mistakenly accessing one domain nameinstead of another. This may occur in e-commerce with its rapid progress and instant (and theerotically limitless) accessibility to users and potential customers and particularly so in areas ofspecific overlap. Ordinary consumers/users seeking to locate the functions available under onedomain name may be confused if they accidentally arrived at a different but similar web sitewhich offers no such services. Such users could well conclude that the first domain name ownerhad mis-represented its goods or services through its promotional activities and the first domainowner would thereby lose their customer. It is apparent therefore that a domain name may haveall the characteristics of a trademark and could found an action for passing off"In Dr Reddy's Laboratories Limited Vs Manu Kosuri and Anr 2001 (58) DRJ241 Hon'ble HighCourt of Delhi Court held that "It is a settled legal position that when a defendant does businessunder a name which is sufficiently close to the name under which the plaintiff is trading and thatname has acquired a reputation the public at large is likely to be misled that the defendant'sbusiness is the business of the plaintiff or is a branch or department of the plaintiff, the defendantis liable for an action in passing off and it is always not necessary that there must be in existencegoods of the plaintiff with which the defendant seeks to confuse his own domain name passingoff may occur in cases where the plaintiffs do not in fact deal with the offending goods. Whenthe plaintiffs and defendants are engaged in common or overlapping fields of activity, the

competition would take place and there is grave and immense possibility for confusion anddeception. The domain name serve same function as the trademark and is not a mere address orlike finding number of the Internet and, Therefore, plaintiff is entitled to equal protection as trademark. The domain name is more than a mere Internet address for it also identifies the Internetsite to those who reach it. In an Internet service, a particular Internet site could be reached byanyone anywhere in the world who proposes to visit the said Internet site. In a matter whereservices rendered through the domain name in the Internet, a very alert vigil is necessary and astrict view needs to be taken for its easy access and reach by anyone from any corner of theworld. The trademarks/domain name 'DR. REDDY'S' of the plaintiff and 'drreddyslab.com' of thedefendants are almost similar except for use of the suffix 'lab.com' in the defendants domain use.The degree of the similarity of the marks usually is vitally important and significant in an actionfor passing off as in such a case, there is every possibility and likelihood of confusion anddeception being caused. Considering both the domains' name, it is clear that two names beingalmost identical or similar in nature, there is every possibility of an Internet user being confusedand deceived in believing that both the domain names belong to plaintiff although the twodomain names belong to two different concerns".In Aqua Minerals Limited Vs Mr Pramod Borse & Anr; AIR2001Delhi 467 the Hon'ble HighCourt of Dehi Court has held that Unless and until a person has a credible Explanation as to whydid he choose a particular name for registration as a domain name or for that purpose as a tradename which was already in long and prior existence and had established its goodwill andreputation there is no other inference to be drawn than that the said person wanted to trade in thename of the trade name he had picked up for registration or as a domain name because of itsbeing an established name with widespread reputation and goodwill achieved at huge cost andexpenses involved in the advertisement.In Nestle India Limited Vs Mood Hospitality Pvt Limited; 2010 (42) PTC 514 (Del) the Hon'bleHigh Court of Dehi Court has held that in case of interim relief/injunction test of prima faciecase as traditionally understood has been replaced, at least in trade mark matters, by the test ofcomparative strengths of the rival cases. This is also in keeping with the requirements of the saidAct inasmuch as it not only describes what amounts to infringement (see: Section 29) but it alsomakes provision for what does not amount to infringement (see: Section 30)......Thus, apart fromexamining the case in the context of Section 29 of the said Act only from the standpoint of therespondent/ plaintiff, it was also incumbent upon the learned Single Judge to consider the relativeor comparative strength of the appellant's/defendant's case both under Section 29 and Section 30(2) (a) of the said Act.Domain Name Registration ProcessIn order to reserve a domain, a registrant must register it with one of almost a thousand ICANNaccredited registrars. The registrar will check if the domain is available and create a WHOISrecord with the registrants information. It is also possible to register domains through aregistrars resellers.A registrant is the person or organization who has registered the domain name. In order to do so,the registrant will usually apply online to a domain registrar or one of their resellers. Theregistrant is bound by the terms and conditions of the registrar with which it registers its domainname, for instance adhering to a certain code of conduct or indemnifying the registrar andregistry against any legal or civil action taken as a result of use of the domain name. Registrantshave certain responsibilities that are incorporated into these terms and conditions like payment of

registration fees and submission and timely update of accurate data.

In addition to registering the name, registrants also need to have their domains listed on nameservers in order to have that domain reachable on the Internet. A registrant is responsible forprocuring or hosting his or her own name server if the registrar does not offer this service or heor she has opted out of the registrars service.Registrars are organizations accredited by ICANN and certified by the registry operators to selldomains. They are bound by the Registrar Accreditation Agreement (RAA) with ICANN - andby their agreements with the registry operators. The RAA sets out responsibilities for theregistrar including maintenance of WHOIS data, submission of data to domain registries,facilitating public WHOIS queries, ensuring registrants details are escrowed, and complying withRAA conditions relating to the conclusion of the registration period.Some registrants may opt to register through a reseller. These are affiliated or under contractwith registrars, and usually offer other services such as web hosting, email mailboxes etc.Resellers are bound by their agreements with the registrar(s) whose services they sell; they arenot accredited by ICANN. However, the registrar for whom they are re-selling will still be thesponsor for the domain name registration and accountable for the domains sold by the reseller.While registrars are contracted to conduct the day-to-day business of selling domain nameregistrations, registry operators are responsible for maintaining the registry for each TLD. Theresponsibilities of the registry operator include accepting registration requests (whether fromregistrars or directly from registrants), maintaining a database of the necessary registration dataand providing name servers to publish the zone file data (i.e. information about the location of adomain) throughout the Internet.The Internet Corporation for Assigned Names and Numbers (ICANN) is the international nonprofit corporation that oversees the assignment of both IP addresses and domain names. It hasresponsibility for managing root server and TLD name system management and has contractualagreements with both registries and registrars that provide the foundation for the WHOIS system.A. Scope of the Uniform Domain Name Dispute Resolution PolicyWhat is the Uniform Domain Name Dispute Resolution Policy?The Uniform Domain Name Dispute Resolution Policy (the UDRP Policy) sets out the legalframework for the resolution of disputes between a domain name registrant and a third party (i.e.,a party other than the registrar) over the abusive registration and use of an Internet domain namein the generic top level domains or gTLDs (e.g., .biz, .com, .info, .mobi, .name, .net, .org), andthose country code top level domains or ccTLDs that have adopted the UDRP Policy on avoluntary basis. At its meetings on August 25 and 26, 1999 in Santiago, Chile, the ICANN Boardof Directors adopted the UDRP Policy, based largely on the recommendations contained in theReport of the WIPO Internet Domain Name Process, as well as comments submitted by registrarsand other interested parties. All ICANN-accredited registrars that are authorized to registernames in the gTLDs and the ccTLDs that have adopted the Policy have agreed to abide by andimplement it for those domains. Any person or entity wishing to register a domain name in thegTLDs and ccTLDs in question is required to consent to the terms and conditions of the UDRPPolicy.

On October 24, 1999, the ICANN Board adopted a set of Rules for Uniform Domain NameDispute Resolution Policy (the UDRP Rules) setting out the procedures and other requirementsfor each stage of the dispute resolution administrative procedure. The procedure is administeredby dispute resolution service providers accredited by ICANN. The WIPO Arbitration andMediation Center (WIPO Center) is such a dispute resolution service provider.The WIPO Center acted as technical advisors to the ICANN drafting committee charged withfinalizing the UDRP Policy and Rules. It has developed WIPO Supplemental Rules for UniformDomain Name Dispute Resolution Policy which supplement the UDRP Policy and Rules.Who can use the UDRP Administrative Procedure?Any person or company in the world can file a domain name complaint concerning a gTLDusing the UDRP Administrative Procedure.In case of a dispute involving a domain name registered in a ccTLD, the UDRP AdministrativeProcedure can also be used, provided that the concerned ccTLD registration authority adoptedthe UDRP Policy on a voluntary basis. This information is contained in the overview of allccTLDs for which WIPO provides dispute resolution services.What types of disputes are covered by the UDRP Administrative Procedure?According to Paragraph 4(a) of the UDRP Policy, the UDRP Administrative Procedure is onlyavailable for disputes concerning an alleged abusive registration of a domain name; that is,which meet the following criteria:(i) the domain name registered by the domain name registrant is identical or confusingly similarto a trademark or service mark in which the complainant (the person or entity bringing thecomplaint) has rights; and(ii) the domain name registrant has no rights or legitimate interests in respect of the domain namein question; and(iii) the domain name has been registered and is being used in bad faithWhat circumstances are evidence that a domain name has been registered and is being usedin bad faith?Paragraph 4(b) of the UDRP Policy sets out the following examples of circumstances that will beconsidered by an Administrative Panel to be evidence of the bad faith registration and use of adomain name:(i) Circumstances indicating that the domain name was registered or acquired primarily for thepurpose of selling, renting, or otherwise transferring the domain name registration to thecomplainant who is the owner of the trademark or service mark or to a competitor of thatcomplainant, for valuable consideration in excess of the domain name registrant's out-of-pocketcosts directly related to the domain name; or(ii) The domain name was registered in order to prevent the owner of the trademark or servicemark from reflecting the mark in a corresponding domain name, provided that the domain nameregistrant has engaged in a pattern of such conduct; or(iii) The domain name was registered primarily for the purpose of disrupting the business of acompetitor; or(iv) By using the domain name, the domain name registrant intentionally attempted to attract for

financial gain, Internet users to the registrant's website or other on-line location, by creating alikelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, orendorsement of the registrant's website or location or of a product or service on the registrant'swebsite or location.The above examples are not exclusive and other circumstances may exist that demonstrate theregistration and use of a domain name in bad faith.What are the advantages of the UDRP Administrative Procedure?The main advantage of the UDRP Administrative Procedure is that it typically provides a fasterand cheaper way to resolve a dispute regarding the registration and use of an Internet domainname than going to court. In addition, the procedures are considerably more informal thanlitigation and the decision-makers are experts in such areas as international trademark law,domain name issues, electronic commerce, the Internet and dispute resolution. It is alsointernational in scope: it provides a single mechanism for resolving a domain name disputeregardless of where the registrar or the domain name holder or the complainant are located.If I use the UDRP Administrative Procedure, can I still go to court?Yes. Paragraph 4(k) of the UDRP Policy provides that the mandatory administrative proceedingrequirement shall not prevent either the domain name registrant (Respondent) or the third party(Complainant) from submitting the dispute to a court of competent jurisdiction for independentresolution. It is possible for a party to start a lawsuit in court before an administrative proceedingis commenced. A party can also commence a lawsuit after the administrative proceeding isconcluded if it is not satisfied with the outcome.Paragraph 18 of the UDRP Rules sets out what action an Administrative Panel may take if courtproceedings are initiated prior to or during an administrative proceeding.Can I use the UDRP Administrative Procedure for a dispute involving a domain nameregistered in a country code top level domain?Yes, provided that the domain name Registration Agreement covering the domain name in issuespecifically incorporates the UDRP Policy. This is the case for certain ccTLDs that have adoptedthe UDRP Policy on a voluntary basis.Can I use the UDRP Administrative Procedure to bring a case against the registrar withwhich I have registered the domain name?No. The UDRP Administrative Procedure is only available to resolve disputes between a thirdparty alleging an abusive registration of a domain name (see above) and the domain nameregistrant.Can I, as a domain name holder, use the UDRP Administrative Procedure to bring a caseagainst someone who has threatened to sue me and take away my domain name?No. The UDRP Administrative Procedure is only available to resolve disputes brought orcommenced by a third party alleging an abusive registration of a domain name against a domainname registrant.B. Overview of the UDRP Administrative ProcedureWhat are the various stages in the UDRP Administrative Procedure?

The five basic stages in a UDRP Administrative Procedure are:

(1) The filing of a Complaint with an ICANN-accredited dispute resolution service providerchosen by the Complainant, such as the WIPO Center;(2) The filing of a Response by the person or entity against whom the Complaint was made;(3) The appointment by the chosen dispute resolution service provider of an Administrative Panelof one or three persons who will decide the dispute;(4) The issuance of the Administrative Panel's decision and the notification of all relevant parties;and(5) The implementation of the Administrative Panel's decision by the registrar(s) concernedshould there be a decision that the domain name(s) in question be cancelled or transferred.A more detailed description of the UDRP Administrative Procedure is available (Word or pdf).How long does the UDRP Administrative Procedure take?The Administrative Procedure normally should be completed within 60 days of the date theWIPO Center receives the Complaint.How much does the UDRP Administrative Procedure cost?For a case filed with the WIPO Center involving between 1 and 5 domain names that is to bedecided by a single Panelist, the fee is USD1500. For a case that is to be decided by 3 Panelists,the fee is USD4000.For a case involving between 6 and 10 domain names that is to be decided by a single Panelist,the fee is USD2000 and USD5000 for a case that is to be decided by 3 Panelists.It is the parties that decide whether the case is to proceed before 1 or 3 Panelists.The Complainant is responsible for paying the total fees. The only time the Respondent has toshare in the fees is when the Respondent chooses to have the case decided by 3 Panelists and theComplainant had chosen a single Panelist.The fees described above do not include any payment that might have to be made to a lawyerrepresenting a party in the administrative proceeding.Please consult the WIPO Center's Schedule of Fees for further details.Is the UDRP Administrative Procedure confidential?Following the formal commencement of an administrative proceeding, the WIPO Centerpublishes on its website the domain name(s) in issue, the date of the formal commencement ofthe administrative proceeding and the status of the case. The WIPO Center also makes availableon its website the decisions rendered under the UDRP Policy in accordance with Paragraph 16 ofthe UDRP Rules, by case number or by topic through a searchable Index.The WIPO Center will normally not disclose any other information about the proceedings.In what language is the UDRP Administrative Procedure conducted?According to Paragraph 11 of the UDRP Rules, unless the parties to an administrative proceedingagree otherwise, or the Registration Agreement that relates to the domain name in questionspecifies otherwise, the language of the administrative proceeding will normally be the languageof the relevant Registration Agreement. The Administrative Panel, however, has the discretion to

designate a different language, taking into consideration the circumstances of the administrativeproceeding (e.g., the nationality of the parties, the language of the documentation). TheAdministrative Panel also has the authority to order parties to translate documents that are not inthe language of the administrative proceeding.Are in-person hearings required in the UDRP Administrative Procedure?Paragraph 13 of the UDRP Rules makes it clear that there shall be no in-person hearings(including hearings by teleconference, videoconference, and web conference), unless theAdministrative Panel determines, only as an exceptional matter, that a hearing is necessary inorder for it to make its decision.C. Preparing and Filing a ComplaintTo which dispute resolution service provider do I submit my Complaint?The Complaint may be submitted to any accredited dispute resolution service provider. For thegTLDs, these providers are accredited by ICANN. For the ccTLDs to which the UDRP Policyapplies, they are accredited by the administration of the ccTLD in question. Not only must theComplaint conform to the requirements specified in the UDRP Rules, but also to those specifiedin the chosen Provider's supplemental rules, if any.The WIPO Center was the first provider to be accredited by ICANN and the first to receive casesunder the UDRP Policy. Its expertise to administer domain name disputes stems from itsinvolvement in the international process conducted by WIPO at the request of its member Stateswhich led to the UDRP Policy and Rules. The WIPO Center also has specialist knowledge inintellectual property and considerable experience in dispute resolution administration generally.Is there a standard form in which a Complaint should be submitted?While there is no standard ICANN form, the WIPO Center has prepared a model Complaint andfiling guidelines which parties may wish to consult. This model has been prepared by the WIPOCenter and is intended to serve as a guide for filing a Complaint under the UDRP Policy with theWIPO Center. Its use as a basis for the preparation of a party's complaint does not preclude thepossibility of that Complaint being found deficient following the WIPO Center's formalitiescompliance review, nor does reliance on the model guarantee a Complainant's success on themerits.How do I submit a Complaint?A complaint must be submitted in electronic form in accordance with paragraph 3(b) of theUDRP Rules and 12(a) of the WIPO Supplemental Rules. In order to facilitate electronic filing,the WIPO Center offers the following options:

download and complete the model Complaint as a Word document to submit as an emailattachment to domain.disputes@wipo.int; or

complete and submit directly online to the Center an electronic form of the modelComplaint.

Please consult the filing guidelines for further information.

In what language should the Complaint be made?

Unless the Complainant and the Respondent agree otherwise, or if specified otherwise in theRegistration Agreement, the Complaint must normally be in the same language as theRegistration Agreement. The Administrative Panel can order any attachments not in the samelanguage as the Registration Agreement to be translated in full or in part by and at the cost of thesubmitting party.Does the Complaint have to be prepared and submitted by a lawyer?While the assistance of a lawyer may be helpful, there is no requirement that the Complaint beprepared or submitted by a lawyer.What information should be included in the Complaint?The information that must be included in the Complaint is described in Paragraph 3 of the UDRPRules. In addition, the WIPO Center has prepared a model Complaint and filing guidelines whichserve as a checklist of elements to include in a Complaint. In order to assist parties in preparingtheir submissions, the WIPO Center also makes available an online Index of decisions renderedunder the UDRP Policy, as well as a jurisprudential Overview.Can a Complaint include more than one domain name?Under Paragraph 3(c) of the UDRP Rules, the Complaint may relate to more than one domainname, so long as the person or entity that is the registrant of the domain names specified in theComplaint is the same.Does the Complaint have to be certified or notarized?No.Do any payments have to be made when filing the Complaint?Yes. The appropriate fee specified in the WIPO Center's Schedule of Fees must be submittedtogether with the Complaint, using one of the methods described.Is the Complainant required to send a copy of the Complaint to the Respondent?Further to updated UDRP Rules in effect as of July 31, 2015, a copy of the Complaint should besent only to the WIPO Center at domain.disputes@wipo.int, and the concerned Registrar(s).Which contact details should be used when sending the Complaint to the concernedRegistrar(s) and what communication methods should be used?In addition to submitting the Complaint to the WIPO Center, the WIPO Supplemental Rulesrequire that a copy of the Complaint be sent to the concerned registrar(s). The Complainantshould also notify the WIPO Center that the Complaint has in fact been sent to the concernedregistrar(s). Certain registrars have established specific contact details that should be used forthese purposes, which may be obtained by contacting the registrar(s) in question.Where can I get information about who is the registrant of a domain name?Certain registration information can be obtained for domain names registered in the gTLDs byconducting a "Whois" search, in particular at http://www.internic.net/whois.html. For ccTLDs, orfor additional information, the concerned registrar's Whois service may be used (accessed via theregistrar's website).

D. Preparing and Filing a Response

Is the filing of a Response mandatory?Under the terms of the agreement which the domain name registrant entered into whenregistering the domain name, the registrant must submit to the administrative proceeding. TheRespondent has 20 days from the date of commencement of the administrative proceeding tosubmit a Response.How many days does a Respondent have to file a Response?According to Paragraph 5(a) of the UDRP Rules, the Respondent must file its Response within20 days of the commencement of the administrative proceeding. An administrative proceeding isdeemed to have formally commenced once the dispute resolution service provider has formallynotified the Complaint in accordance with Paragraph 2(a) of the UDRP Rules.What happens if a Response is not filed or not filed on time?If the Respondent does not file its Response (including any payment that may be required) by theapplicable deadline, the Respondent will be considered in default. Despite the Respondent'sdefault, the WIPO Center will proceed to appoint the Administrative Panel. The Panel will beinformed of the Respondent's default. It will decide the dispute based on the informationavailable to it and may draw such inferences as it deems appropriate from the Respondent'sfailure to submit a timely Response.Is there a standard form in which a Response should be submitted?In addition to a model Response, the WIPO Center has prepared filing guidelines which partiesmay wish to consult for guidance. The use of the model Response and filing guidelines as a basisfor the preparation of a party's Response does not guarantee a Respondent's success on themerits.When submitting a Response electronically, what format should be used?In order to facilitate the electronic submission of a Response, the WIPO Center offers thefollowing options:

download and complete the model Response as a Word document to submit as an emailattachment to domain.disputes@wipo.int; or

complete and submit directly online to the Center an electronic form of the modelResponse

In what language should the Response be made?

Unless the Complainant and the Respondent agree otherwise, or if specified otherwise in theRegistration Agreement, the Response must normally be in the same language as the RegistrationAgreement. The Administrative Panel can order any attachments not in the same language as theRegistration Agreement to be translated in full or in part by and at the cost of the submittingparty.Does the Response have to be submitted by a lawyer?While the assistance of a lawyer may be helpful, there is no requirement that the Response beprepared or submitted by a lawyer.What information should be included in the Response?

The information that must be included in the Response is described in Paragraph 5 of the UDRPRules. In addition, the WIPO Center has prepared a model Response and filing guidelines whichserves as a checklist of the elements to include in the Response. In order to assist parties inpreparing their submissions, the WIPO Center also makes available an online Index of decisionsrendered under the UDRP Policy, as well as a jurisprudential Overview.In preparing my Response, how do I demonstrate my rights to and legitimate interests inthe domain name that is the subject of the Complaint?Paragraph 4(c) of the UDRP Policy states that any of the following circumstances, in particularbut without limitation, if found by the Administrative Panel to be proved based on its evaluationof all evidence presented, shall demonstrate the domain name registrant's rights or legitimateinterests to the domain name for the purposes of Paragraph 4(a)(ii) of the Policy:(i) before any notice to the domain name registrant of the dispute, the registrant's use of, ordemonstrable preparations to use, the domain name or a name corresponding to the domain namein connection with a bona fide offering of goods or services; or(ii) the domain name registrant (as an individual, business, or other organization) has beencommonly known by the domain name, even if the registrant has acquired no trademark orservice mark rights; or(iii) the domain name registrant is making a legitimate non-commercial or fair use of the domainname, without intent for commercial gain to misleadingly divert consumers or to tarnish thetrademark or service mark at issue.Does the Response have to be certified or notarized?No.Do any fees have to be paid when filing a Response?The only time a fee has to be paid by the Respondent is when the Complainant chooses to havethe case decided by a single Panelist, but the Respondent prefers to have the case decided bythree Panelists. In such cases, the applicable fee is shared equally between the Complainant andthe Respondent. The Respondent must submit its payment together with its Response. If it doesnot, the Respondent will be considered in default and the Center may disregard the Respondent'sdesignation of the number of Panelists.How do I submit a Response?Under the UDRP Rules, a Response must be submitted electronically.In order to facilitate filing, the WIPO Center offers the following options:

Download and complete the model Response as a Word document to submit as an emailattachment to domain.disputes@wipo.int; or

Complete and submit directly online to the Center as an electronic form of the modelesponse.

Which contact details should be used when sending the Response to the Complainant andwhat communication methods should be used?The Response should be submitted electronically including all annexes to the Complainant andto the Center.

Does the Response have to be sent to the registrar(s)?

No.E. The Role of the Administrative PanelWhat is an Administrative Panel?An Administrative Panel is composed of one or three independent and impartial personsappointed by the dispute resolution service provider that is selected to administer the dispute inaccordance with the UDRP Policy and Rules. The Administrative Panel is independent of thedispute resolution service provider, ICANN, the concerned registrar(s) and the parties.Who are the Panelists?The persons appearing on the WIPO Center's list of Domain Name Panelists have been selectedon the basis of their well-established reputation for their impartiality, sound judgment andexperience as decision-makers, as well as their substantive experience in the areas ofinternational trademark law, electronic commerce and Internet-related issues. The WIPO Center'slist is international, consisting of some 400 Panelists from over 50 countries, many of whom aremulti-lingual.When is the Administrative Panel appointed?The Administrative Panel is appointed after the filing of the Response, if one is made, orfollowing the due date on which the Response should have been filed. In the case of a SinglePanelist administrative proceeding, the WIPO Center will work to appoint the AdministrativePanel within 5 days of the filing of the Response or the Response due date. In the case of a threeperson Administrative Panel, normally the WIPO Center will appoint the Panel within 15 days ofthe filing of the Response or the Response due date.How is an Administrative Panel appointed?An Administrative Panel is appointed by the WIPO Center as follows:(i) If both the Complainant and Respondent indicate that they wish the dispute to be decided by asingle Panelist, the Panelist will be appointed by the WIPO Center from its list of Domain NamePanelists.(ii) If the Complainant designates 3 Panelists and the Respondent designates 1 Panelist, or viceversa, then the WIPO Center will appoint a three-person Administrative Panel. In so doing, theWIPO Center will try to appoint one of the candidates nominated by the Complainant and one ofthe candidates nominated by the Respondent. If it is unable to do so, the Center will make anappropriate appointment from its list of Domain Name Panelists. The third Panelist, or PresidingPanelist, will be appointed on the basis of preferences indicated by the parties from among a listof 5 candidates that will have been provided to them by the WIPO Center. (If it is the Respondentthat chooses a three-member Panel, the Respondent is required to pay half of the applicable fees;in all other situations, the fees are paid by the Complainant.)(iii) If no Response is filed by the Respondent, then the WIPO Center will appoint theAdministrative Panel in accordance with the number of panelists designated by the Complainant(i.e. 1 or 3). If the Complainant designated a three-member panel, the Center will try to appointone of the candidates nominated by the Complainant, failing which it will make the appointment

from its published list. It will make the appointment of the other two Panelists from its list ofDomain Name Panelists.F. The Administrative Panel DecisionWhat decisions can the Administrative Panel take?Only three types of decisions can be made by the Administrative Panel:(i) Decide in favor of the person or entity that filed the Complaint and order that the disputeddomain name(s) be transferred to that person or entity;(ii) Decide in favor of the person or entity that filed the Complaint and order that the disputeddomain name(s) be cancelled;(iii) Decide in favor of the domain name registrant (i.e., deny the requested remedy). In thisregard, if the Panel concludes that the dispute is not within the scope of Paragraph 4(a) of theUDRP Policy, it must specify this in its decision. Also, if after considering the submissions of theparties, the Panel finds that the Complaint was brought in bad faith, the Panel is required todeclare in its decision that the Complaint was brought in bad faith and constitutes an abuse of theadministrative proceeding.Can the Administrative Panel award any monetary amounts?No. The Administrative Panel cannot award money judgments nor lawyers' costs.How long does it take to get a decision?Paragraph 15(b) of the UDRP Rules provides that, in the absence of exceptional circumstances,the Administrative Panel shall forward its decision on the Complaint to the WIPO Center withinfourteen days of its appointment.How is an Administrative Panel decision implemented?An Administrative Panel decision is implemented by the registrar with which the contesteddomain name is registered at the time the decision is rendered.In accordance with Paragraph 4(k) of the UDRP Policy, the registrar is required to implement thePanel's decision 10 business days after it receives notification of the decision from the disputeresolution service provider, except if the registrar receives proper information from the domainname registrant (Respondent) in that 10-day period that it is challenging the decision in court(see below).Each registrar establishes its own guidelines concerning the implementation of the transfer orcancellation of a domain name registration pursuant to an Administrative Panel's decision.Is it possible to challenge an Administrative Panel decision?Yes. Paragraph 4(k) of the Policy allows a domain name registrant that loses in theAdministrative Proceeding to challenge the Administrative Panel's decision by filing a lawsuit incertain courts. As noted above, the concerned registrar(s) will implement the Panel's decision 10business days after it receives notification of the decision from the dispute resolution serviceprovider, unless it receives from the registrant during that 10-day period official documentation(such as a copy of a complaint, file-stamped by the clerk of the court) that the registrant hascommenced a lawsuit against the Complainant in a jurisdiction to which the Complainant has

submitted under Paragraph 3(b)(xiii) of the UDRP Rules, i.e., a "Mutual Jurisdiction" (seebelow).The concerned registrar will then take no further action until it receives:(i) Satisfactory evidence of a resolution of the dispute between the parties; or(ii) Satisfactory evidence that the domain name registrant's lawsuit has been dismissed orwithdrawn; or(iii) A copy of an order from the court in which the lawsuit was filed dismissing the lawsuit orordering that the domain name registrant has no right to continue to use the domain name.What is meant by "Mutual Jurisdiction"?The Mutual Jurisdiction is defined in the UDRP Rules as a court jurisdiction at the location ofeither (a) the principal office of the registrar (provided that the domain name registrant hassubmitted in the Registration Agreement to that jurisdiction for court adjudication of disputesconcerning or arising from the use of the domain name) or (b) the domain name registrant'saddress as shown for the registration of the domain name in the concerned registrar's WHOISdatabase at the time the Complaint is submitted to a dispute resolution service provider.Are the Administrative Panel's decisions available to the public?Yes. According to Paragraph 16(b) of the Rules, except where an Administrative Panel decidesotherwise in exceptional circumstances, a dispute resolution service provider is required topublish all decisions in full on the Internet. WIPO Administrative Panel decisions can beaccessed through the WIPO Center's website. An online Index of the decisions by domain namecategory, procedural, or substantive issue is also available. The Center also makes available ajurisprudential Overview.What happens if the parties come to an agreement over their dispute during theproceedings?Further to updated UDRP Rules in effect as of July 31, 2015, (see paragraph 17), a UDRPproceeding may be suspended to implement a settlement agreement between the Parties. Furtherto the WIPO Supplemental Rules in effect as of July 31, 2015 if the parties agree on a settlementbefore Panel appointment, they should notify the WIPO Center of such settlement by submittingthe Standard Settlement Form. An email version of the Centers Standard Settlement Form isalso available upon request. In the event of a settlement, if an Administrative Panel has not yetbeen appointed, the Complainant will be entitled to a partial refund of its filing fee.G. The Role of the RegistrarWhat is the registrar's role in the administrative proceeding?Except as decribed below, the registrar does not and will not participate in the administration orconduct of the administrative proceeding. The WIPO Center has prepared a flowchart (word orpdf) illustrating the basic interactions between the WIPO Center and a registrar in the course of acase.The registrar's role in the administrative proceeding is as follows:(i) To provide requested information to the WIPO Center, including confirming that the disputeddomain name is registered with it, that it is registered by the person or entity identified as the

Respondent in the Complaint, providing the Respondent's contact details and, when necessary,the Registration Agreement and associated documents;(ii) To prevent the transfer to a third party of a domain name registration after an AdministrativeProceeding has commenced; and(iii) To implement the Administrative Panel's decision.H. The Role of the WIPO Arbitration and Mediation CenterWhat is the role of the WIPO Arbitration and Mediation Center in an administrativeproceeding?The WIPO Center's role is to administer the proceedings, which includes verifying that theComplaint satisfies the formal requirements of the UDRP Policy and Rules and WIPOSupplemental Rules, co-ordinating with the concerned registrar(s) to verify that the namedRespondent is the actual registrant of the domain name(s) in issue, checking the Respondent'scontact details, notifying the Complaint to the Respondent, sending out case-related notifications,appointing the Administrative Panel and otherwise ensuring that the administrative proceedingruns smoothly and expeditiously.The Center is independent and impartial. It does not decide the dispute between the parties. As anadministrative body, it can provide general information on the procedural aspects of the UDRPPolicy and Rules and WIPO Supplemental Rules, but cannot give any views about the strengthsand weaknesses of a party's case.What is a Case Administrator?The WIPO Case Administrator is principally responsible for managing the case procedures,including all administrative matters relating to the dispute and communications with theAdministrative Panel. The Case Administrator may provide administrative assistance to thePanel, but has no substantive decision authority.WIPO Case Administrators often have legal backgrounds, speak several languages and areexperienced in international dispute resolution and domain name issues.What is the Formalities Compliance Review?The Formalities Compliance Review is a check by the WIPO Center of the Complaint to ensurethat it satisfies all of the formal requirements set out in the UDRP Policy and Rules and WIPOSupplemental Rules. Examples of the items checked by the Center include: whether theComplaint includes the Complaint Transmittal Coversheet; generally, whether the Complaintincludes all of the items listed in Paragraph 3(b) of the UDRP Rules; and whether payment hasbeen made in the correct amount.Uniform Domain Name Dispute Resolution Policy(As Approved by ICANN on October 24, 1999)1. Purpose. This Uniform Domain Name Dispute Resolution Policy (the "Policy") has beenadopted by the Internet Corporation for Assigned Names and Numbers ("ICANN"), isincorporated by reference into your Registration Agreement, and sets forth the terms andconditions in connection with a dispute between you and any party other than us (the registrar)

over the registration and use of an Internet domain name registered by you. Proceedings underParagraph 4 of this Policy will be conducted according to the Rules for Uniform Domain NameDispute Resolution Policy (the "Rules of Procedure"), which are available athttp://www.icann.org/en/dndr/udrp/uniform-rules.htm, and the selected administrative-disputeresolution service provider's supplemental rules.2. Your Representations. By applying to register a domain name, or by asking us to maintain orrenew a domain name registration, you hereby represent and warrant to us that (a) the statementsthat you made in your Registration Agreement are complete and accurate; (b) to your knowledge,the registration of the domain name will not infringe upon or otherwise violate the rights of anythird party; (c) you are not registering the domain name for an unlawful purpose; and (d) youwill not knowingly use the domain name in violation of any applicable laws or regulations. It isyour responsibility to determine whether your domain name registration infringes or violatessomeone else's rights.3. Cancellations, Transfers, and Changes. We will cancel, transfer or otherwise make changesto domain name registrations under the following circumstances:a. subject to the provisions of Paragraph 8, our receipt of written or appropriate electronicinstructions from you or your authorized agent to take such action;b. our receipt of an order from a court or arbitral tribunal, in each case of competentjurisdiction, requiring such action; and/orc. our receipt of a decision of an Administrative Panel requiring such action in anyadministrative proceeding to which you were a party and which was conducted under thisPolicy or a later version of this Policy adopted by ICANN. (See Paragraph 4(i) and (k)below.)We may also cancel, transfer or otherwise make changes to a domain name registration inaccordance with the terms of your Registration Agreement or other legal requirements.4. Mandatory Administrative Proceeding.This Paragraph sets forth the type of disputes for which you are required to submit to amandatory administrative proceeding. These proceedings will be conducted before one of theadministrative-dispute-resolutionserviceproviderslistedatwww.icann.org/en/dndr/udrp/approved-providers.htm (each, a "Provider").a. Applicable Disputes. You are required to submit to a mandatory administrativeproceeding in the event that a third party (a "complainant") asserts to the applicableProvider, in compliance with the Rules of Procedure, that(i) your domain name is identical or confusingly similar to a trademark or servicemark in which the complainant has rights; and(ii) you have no rights or legitimate interests in respect of the domain name; and(iii) your domain name has been registered and is being used in bad faith.In the administrative proceeding, the complainant must prove that each of these threeelements are present.b. Evidence of Registration and Use in Bad Faith. For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the

Panel to be present, shall be evidence of the registration and use of a domain name in badfaith:(i) circumstances indicating that you have registered or you have acquired thedomain name primarily for the purpose of selling, renting, or otherwisetransferring the domain name registration to the complainant who is the owner ofthe trademark or service mark or to a competitor of that complainant, for valuableconsideration in excess of your documented out-of-pocket costs directly related tothe domain name; or(ii) you have registered the domain name in order to prevent the owner of thetrademark or service mark from reflecting the mark in a corresponding domainname, provided that you have engaged in a pattern of such conduct; or(iii) you have registered the domain name primarily for the purpose of disruptingthe business of a competitor; or(iv) by using the domain name, you have intentionally attempted to attract, forcommercial gain, Internet users to your web site or other on-line location, bycreating a likelihood of confusion with the complainant's mark as to the source,sponsorship, affiliation, or endorsement of your web site or location or of aproduct or service on your web site or location.c. How to Demonstrate Your Rights to and Legitimate Interests in the Domain Namein Responding to a Complaint. When you receive a complaint, you should refer toParagraph 5 of the Rules of Procedure in determining how your response should beprepared. Any of the following circumstances, in particular but without limitation, iffound by the Panel to be proved based on its evaluation of all evidence presented, shalldemonstrate your rights or legitimate interests to the domain name for purposes ofParagraph 4(a)(ii):i) before any notice to you of the dispute, your use of, or demonstrable preparations touse, the domain name or a name corresponding to the domain name in connection with abona fide offering of goods or services; or(ii) you (as an individual, business, or other organization) have been commonly knownby the domain name, even if you have acquired no trademark or service mark rights; or(iii) you are making a legitimate noncommercial or fair use of the domain name, withoutintent for commercial gain to misleadingly divert consumers or to tarnish the trademarkor service mark at issue.d. Selection of Provider. The complainant shall select the Provider from among those approvedby ICANN by submitting the complaint to that Provider. The selected Provider will administerthe proceeding, except in cases of consolidation as described in Paragraph 4(f).e. Initiation of Proceeding and Process and Appointment of Administrative Panel. TheRules of Procedure state the process for initiating and conducting a proceeding and forappointing the panel that will decide the dispute (the "Administrative Panel").. Consolidation. In the event of multiple disputes between you and a complainant, either you orthe complainant may petition to consolidate the disputes before a single Administrative Panel.This petition shall be made to the first Administrative Panel appointed to hear a pending dispute

between the parties. This Administrative Panel may consolidate before it any or all such disputesin its sole discretion, provided that the disputes being consolidated are governed by this Policy ora later version of this Policy adopted by ICANN.g. Fees. All fees charged by a Provider in connection with any dispute before an AdministrativePanel pursuant to this Policy shall be paid by the complainant, except in cases where you elect toexpand the Administrative Panel from one to three panelists as provided in Paragraph 5(b)(iv) ofthe Rules of Procedure, in which case all fees will be split evenly by you and the complainant.h. Our Involvement in Administrative Proceedings. We do not, and will not, participate in theadministration or conduct of any proceeding before an Administrative Panel. In addition, we willnot be liable as a result of any decisions rendered by the Administrative Panel.i. Remedies. The remedies available to a complainant pursuant to any proceeding before anAdministrative Panel shall be limited to requiring the cancellation of your domain name or thetransfer of your domain name registration to the complainant.j. Notification and Publication. The Provider shall notify us of any decision made by anAdministrative Panel with respect to a domain name you have registered with us. All decisionsunder this Policy will be published in full over the Internet, except when an Administrative Paneldetermines in an exceptional case to redact portions of its decision.k. Availability of Court Proceedings. The mandatory administrative proceeding requirementsset forth in Paragraph 4 shall not prevent either you or the complainant from submitting thedispute to a court of competent jurisdiction for independent resolution before such mandatoryadministrative proceeding is commenced or after such proceeding is concluded. If anAdministrative Panel decides that your domain name registration should be canceled ortransferred, we will wait ten (10) business days (as observed inthe location of our principal office) after we are informed by the applicable Provider ofthe Administrative Panel's decision before implementing that decision. We will thenimplement the decision unless we have received from you during that ten (10) businessday period official documentation (such as a copy of a complaint, file-stamped by theclerk of the court) that you have commenced a lawsuit against the complainant in ajurisdiction to which the complainant has submitted under Paragraph 3(b)(xiii) of theRules of Procedure. (In general, that jurisdiction is either the location of our principaloffice or of your address as shown in our Whois database. See Paragraphs 1 and 3(b)(xiii)of the Rules of Procedure for details.) If we receive such documentation within the ten(10) business day period, we will not implement the Administrative Panel's decision, andwe will take no further action, until we receive (i) evidence satisfactory to us of aresolution between the parties; (ii) evidence satisfactory to us that your lawsuit has beendismissed or withdrawn; or (iii) a copy of an order from such court dismissing yourlawsuit or ordering that you do not have the right to continue to use your domain name.5. All Other Disputes and Litigation. All other disputes between you and any party other thanus regarding your domain name registration that are not brought pursuant to the mandatoryadministrative proceeding provisions of Paragraph 4 shall be resolved between you and suchother party through any court, arbitration or other proceeding that may be available.6. Our Involvement in Disputes. We will not participate in any way in any dispute between youand any party other than us regarding the registration and use of your domain name. You shallnot name us as a party or otherwise include us in any such proceeding. In the event that we are

named as a party in any such proceeding, we reserve the right to raise any and all defensesdeemed appropriate, and to take any other action necessary to defend ourselves.7. Maintaining the Status Quo. We will not cancel, transfer, activate, deactivate, or otherwisechange the status of any domain name registration under this Policy except as provided inParagraph 3 above.. Transfers During a Dispute.a. Transfers of a Domain Name to a New Holder. You may not transfer your domainname registration to another holder (i) during a pending administrative proceedingbrought pursuant to Paragraph 4 or for a period of fifteen (15) business days (as observedin the location of our principal place of business) after such proceeding is concluded; or(ii) during a pending court proceeding or arbitration commenced regarding your domainname unless the party to whom the domain name registration is being transferred agrees,in writing, to be bound by the decision of the court or arbitrator. We reserve the right tocancel any transfer of a domain name registration to another holder that is made inviolation of this subparagraph.b. Changing Registrars. You may not transfer your domain name registration to anotherregistrar during a pending administrative proceeding brought pursuant to Paragraph 4 orfor a period of fifteen (15) business days (as observed in the location of our principalplace of business) after such proceeding is concluded. You may transfer administration ofyour domain name registration to another registrar during a pending court action orarbitration, provided that the domain name you have registered with us shall continue tobe subject to the proceedings commenced against you in accordance with the terms ofthis Policy. In the event that you transfer a domain name registration to us during thependency of a court action or arbitration, such dispute shall remain subject to the domainname dispute policy of the registrar from which the domain name registration wastransferred.9. Policy Modifications. We reserve the right to modify this Policy at any time with thepermission of ICANN. We will post our revised Policy at <URL> at least thirty (30) calendardays before it becomes effective. Unless this Policy has already been invoked by the submissionof a complaint to a Provider, in which event the version of the Policy in effect at the time it wasinvoked will apply to you until the dispute is over, all such changes will be binding upon youwith respect to any domain name registration dispute, whether the dispute arose before, on orafter the effective date of our change. In the event that you object to a change in this Policy, yoursole remedy is to cancel your domain name registration with us, provided that you will not beentitled to a refund of any fees you paid to us. The revised Policy will apply to you until youcancel your domain name registration

Administrative proceedings for the resolution of disputes under the Uniform Dispute ResolutionPolicy adopted by ICANN shall be governed by these Rules and also the Supplemental Rules ofthe Provider administering the proceedings, as posted on its web site. To the extent that theSupplemental Rules of any Provider conflict with these Rules, these Rules supersede.

DefinitionsIn these Rules:Complainant means the party initiating a complaint concerning a domain-nameregistration.ICANN refers to the Internet Corporation for Assigned Names and Numbers.Mutual Jurisdiction means a court jurisdiction at the location of either (a) theprincipal office of the Registrar (provided the domain-name holder has submitted inits Registration Agreement to that jurisdiction for court adjudication of disputesconcerning or arising from the use of the domain name) or (b) the domain-nameholder's address as shown for the registration of the domain name in Registrar'sWhois database at the time the complaint is submitted to the Provider.Panel means an administrative panel appointed by a Provider to decide a complaintconcerning a domain-name registration.Panelist means an individual appointed by a Provider to be a member of a Panel.Party means a Complainant or a Respondent.Policy means the Uniform Domain Name Dispute Resolution Policy that isincorporated by reference and made a part of the Registration Agreement.Provider means a dispute-resolution service provider approved by ICANN. A list ofsuchProvidersappearsathttp://www.icann.org/en/dndr/udrp/approvedproviders.htm.Registrar means the entity with which the Respondent has registered a domain namethat is the subject of a complaint.Registration Agreement means the agreement between a Registrar and a domainname holder.Respondent means the holder of a domain-name registration against which acomplaint is initiated.Reverse Domain Name Hijacking means using the Policy in bad faith to attempt todeprive a registered domain-name holder of a domain name.Supplemental Rules means the rules adopted by the Provider administering aproceeding to supplement these Rules. Supplemental Rules shall not be inconsistentwith the Policy or these Rules and shall cover such topics as fees, word and pagelimits and guidelines, file size and format modalities, the means for communicatingwith the Provider and the Panel, and the form of cover sheets.Written Notice means hardcopy notification by the Provider to the Respondent of thecommencement of an administrative proceeding under the Policy which shall informthe respondent that a complaint has been filed against it, and which shall state that theProvider has electronically transmitted the complaint including any annexes to theRespondent by the means specified herein. Written notice does not include ahardcopy of the complaint itself or of any annexes.

Communications(a) When forwarding a complaint, including any annexes, electronically to theRespondent, it shall be the Provider's responsibility to employ reasonably availablemeans calculated to achieve actual notice to Respondent. Achieving actual notice, oremploying the following measures to do so, shall discharge this responsibility:(i) sending Written Notice of the complaint to all postal-mail and facsimileaddresses (A) shown in the domain name's registration data in Registrar's Whoisdatabase for the registered domain-name holder, the technical contact, and theadministrative contact and (B) supplied by Registrar to the Provider for theregistration's billing contact; and(ii) sending the complaint, including any annexes, in electronic form by e-mail to:(A) the e-mail addresses for those technical, administrative, and billingcontacts;(B) postmaster@<the contested domain name>; and(C) if the domain name (or "www." followed by the domain name) resolves toan active web page (other than a generic page the Provider concludes ismaintained by a registrar or ISP for parking domain-names registered bymultiple domain-name holders), any e- mail address shown or e-mail links onthat web page; and(iii) sending the complaint, including any annexes, to any e-mail address theRespondent has notified the Provider it prefers and, to the extent practicable, to allother e-mail addresses provided to the Provider by Complainant under Paragraph3(b)(v).(b) Except as provided in Paragraph 2(a), any written communication to Complainantor Respondent provided for under these Rules shall be made electronically via theInternet (a record of its transmission being available), or by any reasonably requestedpreferred means stated by the Complainant or Respondent, respectively (seeParagraphs 3(b)(iii) and 5(b)(iii)).(c) Any communication to the Provider or the Panel shall be made by the means andin the manner (including, where applicable, the number of copies) stated in theProvider's Supplemental Rules.(d) Communications shall be made in the language prescribed in Paragraph 11.(e) Either Party may update its contact details by notifying the Provider and theRegistrar.(f) Except as otherwise provided in these Rules, or decided by a Panel, allcommunications provided for under these Rules shall be deemed to have been made:(i) if via the Internet, on the date that the communication was transmitted,provided that the date of transmission is verifiable; or, where applicable(ii) if delivered by telecopy or facsimile transmission, on the date shown on theconfirmation of transmission; or:(iii) if by postal or courier service, on the date marked on the receipt.

(g) Except as otherwise provided in these Rules, all time periods calculated underthese Rules to begin when a communication is made shall begin to run on the earliestdate that the communication is deemed to have been made in accordance withParagraph 2(f).(h) Any communication by(i) a Panel to any Party shall be copied to the Provider and to the other Party;(ii) the Provider to any Party shall be copied to the other Party; and(iii) a Party shall be copied to the other Party, the Panel and the Provider, as thecase may be.(i) It shall be the responsibility of the sender to retain records of the fact andcircumstances of sending, which shall be available for inspection by affected partiesand for reporting purposes. This includes the Provider in sending Written Notice tothe Respondent by post and/or facsimile under Paragraph 2(a)(i).(j) In the event a Party sending a communication receives notification of non-deliveryof the communication, the Party shall promptly notify the Panel (or, if no Panel is yetappointed, the Provider) of the circumstances of the notification. Further proceedingsconcerning the communication and any response shall be as directed by the Panel (orthe Provider).The Complaint(a) Any person or entity may initiate an administrative proceeding by submitting acomplaint in accordance with the Policy and these Rules to any Provider approved byICANN. (Due to capacity constraints or for other reasons, a Provider's ability toaccept complaints may be suspended at times. In that event, the Provider shall refusethe submission. The person or entity may submit the complaint to another Provider.)(b) The complaint including any annexes shall be submitted in electronic form andshall:(i) Request that the complaint be submitted for decision in accordance with thePolicy and these Rules;(ii) Provide the name, postal and e-mail addresses, and the telephone and telefaxnumbers of the Complainant and of any representative authorized to act for theComplainant in the administrative proceeding;(iii) Specify a preferred method for communications directed to the Complainantin the administrative proceeding (including person to be contacted, medium, andaddress information) for each of (A) electronic-only material and (B) materialincluding hard copy (where applicable);(iv) Designate whether Complainant elects to have the dispute decided by asingle-member or a three-member Panel and, in the event Complainant elects athree-member Panel, provide the names and contact details of three candidates toserve as one of the Panelists (these candidates may be drawn from any ICANNapproved Provider's list of panelists);(v) Provide the name of the Respondent (domain-name holder) and all

information (including any postal and e-mail addresses and telephone and telefaxnumbers) known to Complainant regarding how to contact Respondent or anyrepresentative of Respondent, including contact information based on precomplaint dealings, in sufficient detail to allow the Provider to send the complaintas described in Paragraph 2(a);(vi) Specify the domain name(s) that is/are the subject of the complaint;(vii) Identify the Registrar(s) with whom the domain name(s) is/are registered atthe time the complaint is filed;(viii) Specify the trademark(s) or service mark(s) on which the complaint is basedand, for each mark, describe the goods or services, if any, with which the mark isused (Complainant may also separately describe other goods and services withwhich it intends, at the time the complaint is submitted, to use the mark in thefuture.);(ix) Describe, in accordance with the Policy, the grounds on which the complaintis made including, in particular,(1) the manner in which the domain name(s) is/are identical or confusinglysimilar to a trademark or service mark in which the Complainant has rights;and(2) why the Respondent (domain-name holder) should be considered ashaving no rights or legitimate interests in respect of the domain name(s) thatis/are the subject of the complaint; and(3) why the domain name(s) should be considered as having been registeredand being used in bad faith(The description should, for elements (2) and (3), discuss any aspects ofParagraphs 4(b) and 4(c) of the Policy that are applicable. The description shallcomply with any word or page limit set forth in the Provider's SupplementalRules.);(x) Specify, in accordance with the Policy, the remedies sought;(xi) Identify any other legal proceedings that have been commenced or terminatedin connection with or relating to any of the domain name(s) that are the subject ofthe complaint;(xii) State that a copy of the complaint, including any annexes, together with thecover sheet as prescribed by the Provider's Supplemental Rules, has been sent ortransmitted to the Respondent (domain-name holder), in accordance withParagraph 2(b);(xiii) State that Complainant will submit, with respect to any challenges to adecision in the administrative proceeding canceling or transferring the domainname, to the jurisdiction of the courts in at least one specified Mutual Jurisdiction;(xiv) Conclude with the following statement followed by the signature (in anyelectronic format) of the Complainant or its authorized representative:"Complainant agrees that its claims and remedies concerning the registration

of the domain name, the dispute, or the dispute's resolution shall be solelyagainst the domain-name holder and waives all such claims and remediesagainst (a) the dispute-resolution provider and panelists, except in the case ofdeliberate wrongdoing, (b) the registrar, (c) the registry administrator, and (d)the Internet Corporation for Assigned Names and Numbers, as well as theirdirectors, officers, employees, and agents.""Complainant certifies that the information contained in this Complaint is tothe best of Complainant's knowledge complete and accurate, that thisComplaint is not being presented for any improper purpose, such as to harass,and that the assertions in this Complaint are warranted under these Rules andunder applicable law, as it now exists or as it may be extended by a good-faithand reasonable argument."; and(xv) Annex any documentary or other evidence, including a copy of the Policyapplicable to the domain name(s) in dispute and any trademark or service markregistration upon which the complaint relies, together with a schedule indexingsuch evidence.(c) The complaint may relate to more than one domain name, provided that thedomain names are registered by the same domain-name holder.Notification of Complaint(a) The Provider shall review the complaint for administrative compliance with thePolicy and these Rules and, if in compliance, shall forward the complaint, includingany annexes, electronically to the Respondent and shall send Written Notice of thecomplaint (together with the explanatory cover sheet prescribed by the Provider'sSupplemental Rules) to the Respondent, in the manner prescribed by Paragraph 2(a),within three (3) calendar days following receipt of the fees to be paid by theComplainant in accordance with Paragraph 19.(b) If the Provider finds the complaint to be administratively deficient, it shallpromptly notify the Complainant and the Respondent of the nature of the deficienciesidentified. The Complainant shall have five (5) calendar days within which to correctany such deficiencies, after which the administrative proceeding will be deemedwithdrawn without prejudice to submission of a different complaint by Complainant.(c) The date of commencement of the administrative proceeding shall be the date onwhich the Provider completes its responsibilities under Paragraph 2(a) in connectionwith sending the complaint to the Respondent.(d) The Provider shall immediately notify the Complainant, the Respondent, theconcerned Registrar(s), and ICANN of the date of commencement of theadministrative proceeding.The Response(a) Within twenty (20) days of the date of commencement of the administrativeproceeding the Respondent shall submit a response to the Provider.(b) The response, including any annexes, shall be submitted in electronic form andshall:

(i) Respond specifically to the statements and allegations contained in the

complaint and include any and all bases for the Respondent (domain-nameholder) to retain registration and use of the disputed domain name (This portion ofthe response shall comply with any word or page limit set forth in the Provider'sSupplemental Rules.);(ii) Provide the name, postal and e-mail addresses, and the telephone and telefaxnumbers of the Respondent (domain-name holder) and of any representativeauthorized to act for the Respondent in the administrative proceeding;(iii) Specify a preferred method for communications directed to the Respondent inthe administrative proceeding (including person to be contacted, medium, andaddress information) for each of (A) electronic-only material and (B) materialincluding hard copy (where applicable);(iv) If Complainant has elected a single-member panel in the complaint (seeParagraph 3(b)(iv)), state whether Respondent elects instead to have the disputedecided by a three-member panel;(v) If either Complainant or Respondent elects a three-member Panel, provide thenames and contact details of three candidates to serve as one of the Panelists(these candidates may be drawn from any ICANN-approved Provider's list ofpanelists);(vi) Identify any other legal proceedings that have been commenced or terminatedin connection with or relating to any of the domain name(s) that are the subject ofthe complaint;(vii) State that a copy of the response including any annexes has been sent ortransmitted to the Complainant, in accordance with Paragraph 2(b); and(viii) Conclude with the following statement followed by the signature (in anyelectronic format) of the Respondent or its authorized representative:"Respondent certifies that the information contained in this Response is to thebest of Respondent's knowledge complete and accurate, that this Response isnot being presented for any improper purpose, such as to harass, and that theassertions in this Response are warranted under these Rules and underapplicable law, as it now exists or as it may be extended by a good-faith andreasonable argument."; and(ix) Annex any documentary or other evidence upon which the Respondent relies,together with a schedule indexing such documents.(c) If Complainant has elected to have the dispute decided by a single-member Paneland Respondent elects a three-member Panel, Respondent shall be required to payone-half of the applicable fee for a three-member Panel as set forth in the Provider'sSupplemental Rules. This payment shall be made together with the submission of theresponse to the Provider. In the event that the required payment is not made, thedispute shall be decided by a single-member Panel.(d) At the request of the Respondent, the Provider may, in exceptional cases, extendthe period of time for the filing of the response. The period may also be extended by

written stipulation between the Parties, provided the stipulation is approved by theProvider.(e) If a Respondent does not submit a response, in the absence of exceptionalcircumstances, the Panel shall decide the dispute based upon the complaint.Appointment of the Panel and Timing of Decision(a) Each Provider shall maintain and publish a publicly available list of panelists andtheir qualifications.(b) If neither the Complainant nor the Respondent has elected a three-member Panel(Paragraphs 3(b)(iv) and 5(b)(iv)), the Provider shall appoint, within five (5) calendardays following receipt of the response by the Provider, or the lapse of the time periodfor the submission thereof, a single Panelist from its list of panelists. The fees for asingle-member Panel shall be paid entirely by the Complainant.(c) If either the Complainant or the Respondent elects to have the dispute decided bya three-member Panel, the Provider shall appoint three Panelists in accordance withthe procedures identified in Paragraph 6(e). The fees for a three-member Panel shallbe paid in their entirety by the Complainant, except where the election for a threemember Panel was made by the Respondent, in which case the applicable fees shallbe shared equally between the Parties.(d) Unless it has already elected a three-member Panel, the Complainant shall submitto the Provider, within five (5) calendar days of communication of a response inwhich the Respondent elects a three-member Panel, the names and contact details ofthree candidates to serve as one of the Panelists. These candidates may be drawn fromany ICANN-approved Provider's list of panelists.(e) In the event that either the Complainant or the Respondent elects a three-memberPanel, the Provider shall endeavor to appoint one Panelist from the list of candidatesprovided by each of the Complainant and the Respondent. In the event the Provider isunable within five (5) calendar days to secure the appointment of a Panelist on itscustomary terms from either Party's list of candidates, the Provider shall make thatappointment from its list of panelists. The third Panelist shall be appointed by theProvider from a list of five candidates submitted by the Provider to the Parties, theProvider's selection from among the five being made in a manner that reasonablybalances the preferences of both Parties, as they may specify to the Provider withinfive (5) calendar days of the Provider's submission of the five-candidate list to theParties.(f) Once the entire Panel is appointed, the Provider shall notify the Parties of thePanelists appointed and the date by which, absent exceptional circumstances, thePanel shall forward its decision on the complaint to the Provider.Impartiality and IndependenceA Panelist shall be impartial and independent and shall have, before accepting appointment,disclosed to the Provider any circumstances giving rise to justifiable doubt as to the Panelist'simpartiality or independence. If, at any stage during the administrative proceeding, newcircumstances arise that could give rise to justifiable doubt as to the impartiality or independenceof the Panelist, that Panelist shall promptly disclose such circumstances to the Provider. In such

event, the Provider shall have the discretion to appoint a substitute Panelist.Communication Between Parties and the PanelNo Party or anyone acting on its behalf may have any unilateral communication with the Panel.All communications between a Party and the Panel or the Provider shall be made to a caseadministrator appointed by the Provider in the manner prescribed in the Provider's SupplementalRules.Transmission of the File to the PanelThe Provider shall forward the file to the Panel as soon as the Panelist is appointed in the case ofa Panel consisting of a single member, or as soon as the last Panelist is appointed in the case of athree-member Panel.General Powers of the Panel(a) The Panel shall conduct the administrative proceeding in such manner as itconsiders appropriate in accordance with the Policy and these Rules.(b) In all cases, the Panel shall ensure that the Parties are treated with equality andthat each Party is given a fair opportunity to present its case.(c) The Panel shall ensure that the administrative proceeding takes place with dueexpedition. It may, at the request of a Party or on its own motion, extend, inexceptional cases, a period of time fixed by these Rules or by the Panel.(d) The Panel shall determine the admissibility, relevance, materiality and weight ofthe evidence.(e) A Panel shall decide a request by a Party to consolidate multiple domain namedisputes in accordance with the Policy and these Rules.Language of Proceedings(a) Unless otherwise agreed by the Parties, or specified otherwise in the RegistrationAgreement, the language of the administrative proceeding shall be the language of theRegistration Agreement, subject to the authority of the Panel to determine otherwise,having regard to the circumstances of the administrative proceeding.(b) The Panel may order that any documents submitted in languages other than thelanguage of the administrative proceeding be accompanied by a translation in wholeor in part into the language of the administrative proceeding.Further StatementsIn addition to the complaint and the response, the Panel may request, in its sole discretion,further statements or documents from either of the Parties.In-Person HearingsThere shall be no in-person hearings (including hearings by teleconference, videoconference, andweb conference), unless the Panel determines, in its sole discretion and as an exceptional matter,that such a hearing is necessary for deciding the complaint.Default(a) In the event that a Party, in the absence of exceptional circumstances, does notcomply with any of the time periods established by these Rules or the Panel, the Panel

shall proceed to a decision on the complaint.

(b) If a Party, in the absence of exceptional circumstances, does not comply with anyprovision of, or requirement under, these Rules or any request from the Panel, thePanel shall draw such inferences therefrom as it considers appropriate.Panel Decisions(a) A Panel shall decide a complaint on the basis of the statements and documentssubmitted and in accordance with the Policy, these Rules and any rules and principlesof law that it deems applicable.(b) In the absence of exceptional circumstances, the Panel shall forward its decisionon the complaint to the Provider within fourteen (14) days of its appointmentpursuant to Paragraph 6.(c) In the case of a three-member Panel, the Panel's decision shall be made by amajority.(d) The Panel's decision shall be in writing, provide the reasons on which it is based,indicate the date on which it was rendered and identify the name(s) of the Panelist(s).(e) Panel decisions and dissenting opinions shall normally comply with the guidelinesas to length set forth in the Provider's Supplemental Rules. Any dissenting opinionshall accompany the majority decision. If the Panel concludes that the dispute is notwithin the scope of Paragraph 4(a) of the Policy, it shall so state. If after consideringthe submissions the Panel finds that the complaint was brought in bad faith, forexample in an attempt at Reverse Domain Name Hijacking or was brought primarilyto harass the domain-name holder, the Panel shall declare in its decision that thecomplaint was brought in bad faith and constitutes an abuse of the administrativeproceeding.Communication of Decision to Parties(a) Within three (3) calendar days after receiving the decision from the Panel, theProvider shall communicate the full text of the decision to each Party, the concernedRegistrar(s), and ICANN. The concerned Registrar(s) shall immediately communicateto each Party, the Provider, and ICANN the date for the implementation of thedecision in accordance with the Policy.(b) Except if the Panel determines otherwise (see Paragraph 4(j) of the Policy), theProvider shall publish the full decision and the date of its implementation on apublicly accessible web site. In any event, the portion of any decision determining acomplaint to have been brought in bad faith (see Paragraph 15(e) of these Rules) shallbe published.Settlement or Other Grounds for Termination(a) If, before the Panel's decision, the Parties agree on a settlement, the Panel shallterminate the administrative proceeding.(b) If, before the Panel's decision is made, it becomes unnecessary or impossible tocontinue the administrative proceeding for any reason, the Panel shall terminate theadministrative proceeding, unless a Party raises justifiable grounds for objectionwithin a period of time to be determined by the Panel.

Effect of Court Proceedings

(a) In the event of any legal proceedings initiated prior to or during an administrativeproceeding in respect of a domain-name dispute that is the subject of the complaint,the Panel shall have the discretion to decide whether to suspend or terminate theadministrative proceeding, or to proceed to a decision.(b) In the event that a Party initiates any legal proceedings during the pendency of anadministrative proceeding in respect of a domain-name dispute that is the subject ofthe complaint, it shall promptly notify the Panel and the Provider. See Paragraph 8above.Fees(a) The Complainant shall pay to the Provider an initial fixed fee, in accordance withthe Provider's Supplemental Rules, within the time and in the amount required. ARespondent electing under Paragraph 5(b)(iv) to have the dispute decided by a threemember Panel, rather than the single-member Panel elected by the Complainant, shallpay the Provider one-half the fixed fee for a three-member Panel. See Paragraph 5(c).In all other cases, the Complainant shall bear all of the Provider's fees, except asprescribed under Paragraph 19(d). Upon appointment of the Panel, the Provider shallrefund the appropriate portion, if any, of the initial fee to the Complainant, asspecified in the Provider's Supplemental Rules.(b) No action shall be taken by the Provider on a complaint until it has received fromComplainant the initial fee in accordance with Paragraph 19(a).(c) If the Provider has not received the fee within ten (10) calendar days of receivingthe complaint, the complaint shall be deemed withdrawn and the administrativeproceeding terminated.(d) In exceptional circumstances, for example in the event an in-person hearing isheld, the Provider shall request the Parties for the payment of additional fees, whichshall be established in agreement with the Parties and the Panel.Exclusion of LiabilityExcept in the case of deliberate wrongdoing, neither the Provider nor a Panelist shall be liable toa Party for any act or omission in connection with any administrative proceeding under theseRules.AmendmentsThe version of these Rules in effect at the time of the submission of the complaint to the Providershall apply to the administrative proceeding commenced thereby. These Rules may not beamended without the express written approval of ICANN.The Anticybersquatting Consumer Protection Act: Key InformationThe Anticybersquatting Consumer Protection Act (ACPA), 15 USC 1125(D) "was intended toprevent 'cybersquatting,' an expression that has come to mean the bad faith, abusive registrationand use of the distinctive trademarks of others as Internet domain names, with the intent to profitfrom the goodwill associated with those trademarks." [1]The ACPA renders one liable to the owner of a trademark who, with "a bad faith intent to profit

from that mark," "registers, traffics in or uses a domain name" that is either identical orconfusingly similar to a "distinctive" mark or is identical, confusingly similar or dilutive of a"famous mark."If a violation of the ACPA is found, a court can "order the forfeiture or cancellation of the[offending] domain name or [its] transfer . . . to the owner of the mark." 1125(D)(1)(c). Themark owner can also recover up to three times his actual damages and obtain injunctive relief.Actual damages include the profits the domain name registrant made from his use of the mark, aswell as losses sustained by the mark holder as a result of the domain name registrant's actions,such as lost sales or harm to the mark's reputation. In lieu of actual damages, the mark owner canelect to recover statutory damages of between $1,000 and $100,000 per domain (1117). Theactual amount awarded is fixed by the court in its discretion. 1117(d). In "exceptional cases,"attorney's fees can also be recovered. (1117).'Cybersquatting' DefinedThe ACPA has been effectively used to combat a number of wrongs. These include"cybersquatting," which occurs when a registrant obtains a domain name containing another'smark and offers to sell it to the mark holder for a tidy sum. The ACPA has also been used toprevent domain registrants from improperly profiting from the commercial use of another's mark,such as by selling or displaying ads for products that compete with those of the mark holder at adomain containing the mark. The ACPA has also been successfully used to prevent thetarnishment of a mark by its use in the domain of a Web site containing pornographic or othermaterials with which the mark holder does not wish his mark associated. In addition, the ACPAhas been used to combat gripe sites Web sites critical of the mark holder set up at a domaincontaining his mark.To successfully prosecute an ACPA claim, you must first establish that the defendant "registers,traffics in or uses" the offending domain name. "Registers" encompasses the act of registeringthe domain with a domain name registrar, such as Network Solutions or GoDaddy. The party thatobtains this registration is known as the "domain name registrant." Registering a domain reservesit for the registrant's use, and enables him to display on the domain a Web site of his choosing."Use" occurs when one operates a Web site at the challenged domain. Only "the domain nameregistrant or that registrant's authorized licensee" can be held liable for such "use." (1125(D)(1)(d)). Finally, one "traffics in" an offending domain when he transfers or receives the domain inexchange for consideration, such as via a sale, purchase, loan, pledge or license. (1125(D)(1)(e)).Next, you must establish that the domain name is "identical or confusingly similar" to a"distinctive" mark, or identical, confusingly similar or dilutive of a "famous" mark. In comparingthe mark to the domain name, courts do not consider the generic top-level domain component ofthe domain name, such as the .com in homedepot.com. Nor do they consider a domain name'spath, such as the phrase "Kohler faucets" in the domain homedepot.com/kohlerfaucets, as pathsare not deemed to be source identifiers of a Web site. Instead, courts compare the mark to thesecond-level domain component of the domain at issue, the Home Depot in homedepot.com.Misspelling the Owner's MarkCourts regularly find "typo" domains domain names that misspell the owner's mark to beconfusingly similar and thus to trigger liability under the ACPA. [2] Courts have also foundconfusing similarity in names such as "drinkcoke.org," "mycoca-cola.com" and "pepsisays.com."

[3]The ACPA protects both registered and unregistered common-law marks.[4] However, the markmust be "distinctive" (a trademark term of art) or "famous" (see 1125(c)) at the time the domainname is registered to receive the statute's protection. If your mark is "famous," you can prevailnot only if the domain name at issue is identical or confusingly similar to your mark, but also if itis "dilutive." "Generic" terms are never protected as marks think here of the term "baseball"as a mark for the sale of baseballs.The final element you need to establish is the most difficult to demonstrate, namely themotivation for defendant's conduct. To prevail on an ACPA claim, you must show that defendantacted with "a bad faith intent to profit from [your] mark." The statute (1125(d)(1)(b)(i)(I)-(IX))supplies a nonexhaustive list of nine factors courts may, but do not have to consider, indetermining if defendant acted with the requisite motivation.Three of these factors focus on potential legitimate uses by the defendant of the domain, thepresence of which support a finding that defendant did not act in bad faith. These include: (i) thetrademark or other intellectual property rights of the defendant in the name; (ii) the extent towhich the domain name consists of defendant's legal or nickname; and (iii) the defendant's prioruse of the domain in connection with the bona fide offering of goods or services.The same mark can legitimately be used by different concerns in different markets, or geographicareas. Application of this principle allowed a defendant to defeat an ACPA claim brought byplaintiff arising out of defendant's registration of the domain chambord.com, where defendantutilized the "Chambord" mark to sell coffee-makers, while plaintiff used the same "Chambord"mark to sell liquor and assorted food products. Chatam Intl. v. Bodum, Inc., 157 FSupp2d 549(E.D. Pa. 2001).Names or NicknamesSimilarly, individuals whose name or nickname are identical to a company's mark have been heldto have legitimate claims on a domain containing that mark. See, e.g., Nissan Motor Co. v.Nissan Computer Corp., 61 USPQ2d 1839 (C.D. Cal. 2002) (Uzi Nissan, founder of NissanComputer, held not to violate ACPA as a result of his registration of Nissan.com, incorporatingthe mark of plaintiff Nissan Motor Co.).In determining whether a particular domain name was registered or used in good faith, the usemade of the domain name prior to the commencement of the parties' dispute is particularlyimportant. Switching after a dispute arises from an illegitimate to legitimate use will not cure theoriginal bad faith registration. [5]Switching uses after registration from a legitimate to illegitimate use can, however, evidence therequisite bad faith necessary to trigger ACPA liability. "Bad faith" "can arise either at the time ofregistration or at any time thereafter. Thus, a domain name initially registered legally can becomeillegal through bad faith actions which follow." McCarthy on Trademarks, 25:78, p. 25-296.11.[6]Four of the statute's nine factors evidence a bad faith intent to improperly profit from another'smark. These include:(i) defendant's offer to transfer a domain name to the mark holder for financial gain which hasnot been used in connection with a bona fide offering of goods or services;

(ii) defendant's provision of false contact information when registering the domain name, orfailure to maintain accurate contact information thereafter;(iii) defendant's registration of multiple domain names identical or confusingly similar to themarks of third parties; and(iv) defendant's intent to divert consumers from the mark holder's online location to a site thatharms the good will represented by the mark, whether for commercial gain, or to tarnish ordisparage the mark.Offers to Sell Domain NameMost of these factors are self-explanatory and require little comment. As observed by the U.S.Court of Appeals for the Sixth Circuit "registering a famous trademark as a domain name andthen offering it for sale to the trademark owner is exactly the wrong Congress intended toremedy when it passed the ACPA." Ford Motor Co. v. Catalanotte, 342 F3d 543 (6th Cir. 2003).Courts thus routinely look to offers by the defendant to sell the domain name as evidence of hisbad faith. Such is also true of the submission of false contact information to a domain nameregistrar, which is taken as a sign the defendant neither wants to be identified nor heldaccountable for his conduct.Registration of multiple domain names containing marks owned by third parties also evidencesbad faith. Evidence of such registrations can be obtained by performing a reverse "who is"search. Unlike a typical "who is" search, which only identifies who registered a particulardomain name, a reverse "who is" search allows you to find out each domain a particularindividual registered.The statute enumerates two final factors courts may consider in determining defendant'smotivation. The first is the relative strength of the mark at issue. Use of a strong well-knownmark evidences bad faith. Conversely, "the fact that a mark is not well-known may . . . suggest alack of bad faith." Senate Section-by-Section Analysis, Congressional Record, p. S14717 (Nov.17, 1999).The final factor is whether defendant is making a "bona fide noncommercial or fair use of themark on a site accessible under the domain name." Defendants typically claim that theirnoncommercial complaint site constitutes just such a use. While such a use is evidence ofdefendant's good faith, it is not dispositive as "to recognize such an exemption would evisceratethe protection of the bill by suggesting a blueprint for cybersquatters who would simply createcriticism sites in order to immunize themselves from liability despite their bad faith intentions."Coca-Cola Co. v. Purdy, 382 F3d 774 (8th Cir. 2004).Similarly, that defendant has made no commercial use of his domain, or the mark, is also notdispositive on this issue. See e.g., Bosley Medical Institute v. Kremer, 2005 USAppLexis 5329(9th Cir. 2005).Registered, Trafficked, UsedIf you can establish each of these elements that the defendant registered, trafficked in or useda mark identical or confusingly similar to a distinctive or famous mark with a bad faith intent toprofit therefrom you can use the ACPA to prevent the misuse of your mark in another'sdomain. That is, provided the court does not find that the defendant "believed and had reasonablegrounds to believe that the use of the domain name was a fair use or otherwise lawful." 1125(d)(1)(B)(ii). Such a finding prevents a determination that defendant acted with the requisite "bad

faith." McCarthy on Trademarks, 25:78, p. 25-296.6 says that this defense should be accepted"very sparingly and only in the most unusual cases . . . . Otherwise, every cybersquatter wouldsolemnly aver that its conduct was lawful." [7]But what if the domain registrant has provided false contact information, preventing you fromknowing who to sue? Or what if the registrant resides outside of the United States? Relief canstill be obtained under the ACPA's in rem provisions.In in rem proceedings, the court's remedial powers are limited to directing that the domain nameat issue be forfeited, cancelled or transferred to the mark holder. (1125(d)(2)(D)(i)). The courtcannot award monetary relief.To proceed in rem, the mark holder must demonstrate that he cannot establish personaljurisdiction over the defendant. This can be done where the domain name registrant resides in aforeign country. Alternatively, for registrants whose identity is unknown, the mark holder mustestablish that he cannot locate the defendant both by sending notice to the address listed with thedomain registrar, and by publishing notice of the lawsuit as directed by the court.In rem proceedings can be commenced in a judicial district "in which the domain name registrar,domain name registry, or other domain name authority that registered or assigned the domainname [at issue] is located." (1125(d)(2)(c)).Once in court, the mark holder must still establish, for a registered mark, that the defendantviolated 1125(d). This requires proof of defendant's bad faith, even though he is not presentbefore the court. [8] The burdens here may be less, however, if the identify of the defendant isunknown due to his false contact information. McCarthy on Trademarks, 25:79, pp. 25-305. Anin rem action can also be used to address violations of 15 USC 1125(a) (infringement ofunregistered mark); 1114 (infringement of a registered mark) or 1125(c) (dilution of a famousmark).ernestandjuliogallo.comAs shown above, the ACPA is a useful weapon against those who improperly register a domaincontaining your mark. For example, it was used by E. and J. Gallo Winery, owners of the "Ernestand Julio Gallo" mark, to obtain from defendants the domain name ernestandjuliogallo.com.Plaintiff prevailed despite the fact that defendants neither offered the domain for sale, nor used itto sell wine products. The court held defendants acted in bad faith because they had registeredthe domain as "real estate" on which they had intended to make a profit, and had registered some2,000 additional domains containing the names of famous companies, cities and buildings. Inaddition to directing the defendants to transfer the domain to plaintiff, the court also awardedplaintiff $25,000 in statutory damages. [9]Consumer Gripe SiteIn Harrison v. Microfinancial Inc., [10] the ACPA was used to successfully combat a consumergripe site. There, the court found that a disgruntled customer violated the ACPA by registering adomain name containing defendant's trademark, at which he operated a Web site critical ofdefendant. The court's finding of bad faith rested in large part on its determination that plaintiffhad offered to transfer the domain to defendant if it refunded certain lease payments plaintiff hadmade which were at the heart of his dispute with defendant, as well as funds plaintiff claimeddefendant improperly received from third parties. A similar result was reached in Lamparello v.Falwell, 360 FSupp2d 768 (E.D. Va. 2004).

As shown by the foregoing, the ACPA can be an effective tool to prevent the misuse of yourmark in another's domain.